Absolute Grounds for Refusal
GUIDELINES FOR EXAMINATION OF
EUROPEAN UNION TRADE MARKS
EUROPEAN UNION
INTELLECTUAL PROPERTY OFFICE
(EUIPO)
PART B
EXAMINATION
SECTION 4
ABSOLUTE GROUNDS FOR REFUSAL
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Table of Contents
2.7
Public policy or morality, Article 7(1)(f) EUTMR ....................................... 4
2.7.1
‘Public policy’ .................................................................................................. 4
2.7.1.1
2.7.2
2.8
Deceptiveness: Article 7(1)(g) EUTMR ...................................................... 8
2.8.1
2.8.2
2.8.3
2.8.4
2.8.5
2.9
Concept and categories............................................................................... 4
Accepted principles of morality ....................................................................... 5
Examination of the deceptive character ......................................................... 8
Market reality and consumers’ habits and perceptions .................................. 9
Trade marks with geographical connotations relating to the location of the
applicant or the place of origin of the goods/services .................................. 10
Trade marks making reference to an ‘official’ approval, status or
recognition .................................................................................................... 11
Relation with other EUTMR provisions ......................................................... 12
Protection of flags and other symbols — Article 7(1)(h) and (i)
EUTMR ...................................................................................................... 13
2.9.1
Protection of armorial bearings, flags, other state emblems, official signs
and hallmarks indicating control and warranty under Article 7(1)(h)
EUTMR — Article 6ter(1)(a) and (2) PC ....................................................... 14
2.9.1.1
2.9.1.2
2.9.1.3
2.9.2
2.9.3
Examination of marks consisting of or containing a state flag ................... 17
Examination of marks consisting of or containing armorial bearings and
other state emblems .................................................................................. 21
Examination of marks consisting of or containing official signs and
hallmarks indicating control and warranty.................................................. 24
Protection of armorial bearings, flags, other emblems, abbreviations and
names of international intergovernmental organisations under
Article 7(1)(h) EUTMR — Article 6ter(1)(b) and (c) PC ................................ 24
Protection of badges, emblems or escutcheons other than those covered
by Article 6ter of the Paris Convention under Article 7(1)(i) EUTMR ........... 31
2.10 Article 7(1)(j) EUTMR ................................................................................ 37
2.10.1 General remarks on EU Regulations ............................................................ 38
2.10.1.1 Definition of geographical indications under EU Regulations .................... 38
2.10.1.2 Relevant provisions governing conflicts with trade marks ......................... 39
2.10.2 Relevant PDOs/PGIs under EU Regulations ............................................... 41
2.10.2.1 Relevant point in time ................................................................................ 41
2.10.3 Situations covered by the EU Regulations ................................................... 42
2.10.3.1 EUTM consists solely of a whole PDO/PGI (‘direct use’)........................... 43
2.10.3.2 EUTM contains a whole PDO/PGI in addition to other word or figurative
elements (‘direct or indirect use’) ............................................................... 43
2.10.3.3 EUTM contains or consists of an imitation or evocation of a PDO/PGI ..... 46
2.10.3.4 Other misleading indications and practices ............................................... 49
2.10.3.5 The exploitation of the reputation of PDOs/PGIs ....................................... 50
2.10.3.6 Limits to the scope of protection ................................................................ 51
2.10.3.7 Trade marks in conflict with two or more PDOs/PGIs ................................ 52
2.10.4 Relevant goods under EU Regulations ........................................................ 55
2.10.4.1 Comparable products ................................................................................ 55
2.10.4.2 Restrictions of the list of goods .................................................................. 57
2.10.5 PDOs/PGIs not protected under EU Regulations......................................... 60
2.10.5.1 PDOs/PGIs protected at national level in an EU Member State ................ 60
2.10.5.2 PDOs/PGIs from third countries ................................................................ 61
2.10.5.3 Relationship with other EUTMR provisions ............................................... 64
2.11 Article 7(1)(k) EUTMR ............................................................................... 64
2.11.1 General remarks on EU Regulations ............................................................ 64
2.11.1.1 Definition of traditional terms for wine under EU Regulations.................... 65
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2.11.1.2 Relevant provisions governing conflicts with trade marks ......................... 66
2.11.2 Relevant TTWs under EU Regulations ........................................................ 67
2.11.2.1 Relevant point in time ................................................................................ 67
2.11.3 Situations covered by Article 113(2) of Regulation No 1308/2013............... 67
2.11.4 Relevant goods ............................................................................................. 68
2.11.4.1 Restrictions of the list of goods.................................................................. 69
2.11.5 International agreements .............................................................................. 69
2.11.6 Relationship with other EUTMR provisions .................................................. 69
2.12 Article 7(1)(l) EUTMR ................................................................................ 69
2.12.1 General remarks on EU Regulations ............................................................ 70
2.12.1.1 Definition of traditional specialities guaranteed under EU Regulations ..... 70
2.12.1.2 Relationship with trade marks ................................................................... 71
2.12.2 Relevant goods under EU Regulations ........................................................ 71
2.12.2.1 Relevant point in time ................................................................................ 71
2.12.3 Situations covered by Article 24 of Regulation (EU) No 1151/2012............. 71
2.12.4 Relevant goods ............................................................................................. 72
2.12.4.1 Restrictions of the list of goods .................................................................. 72
2.12.5 International agreements .............................................................................. 72
2.12.6 Relationship with other EUTMR provisions .................................................. 73
2.13 Article 7(1)(m) EUTMR .............................................................................. 73
2.13.1 Legislative framework ................................................................................... 73
2.13.2 Definition of plant variety denomination ....................................................... 74
2.13.3 Situations covered by Article 7(1)(m) EUTMR ............................................. 74
2.13.3.1 Registered plant variety denominations .................................................... 74
2.13.3.2 Relevant point in time ................................................................................ 75
2.13.3.3 The EUTM application consists of, or reproduces in its essential
elements, the plant variety denomination .................................................. 75
2.13.3.4 Plant varieties of the same or closely related species ............................... 76
2.13.4 Relationship with other EUTMR provisions. ................................................. 77
2.14 European Union collective marks ............................................................ 78
2.14.1 Character of collective marks ....................................................................... 78
2.14.2 Ownership..................................................................................................... 79
2.14.3 Particularities as regards absolute grounds for refusal ................................ 80
2.14.3.1 Descriptive signs ....................................................................................... 80
2.14.3.2 Misleading character as to its nature ......................................................... 81
2.14.3.3 Regulations of use contrary to public policy and morality .......................... 81
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2.7
Public policy or morality, Article 7(1)(f) EUTMR
Article 7(1)(f) EUTMR excludes from registration trade marks that are contrary to public
policy or to accepted principles of morality. The rationale of Article 7(1)(f) EUTMR is to
preclude trade marks from registration where granting a monopoly would contravene
the state of law or would be perceived by the relevant public as going directly against
the basic moral norms of society.
The Office considers that ‘public policy’ and ‘accepted principles of morality’ are two
different concepts, which often overlap.
The question whether the goods or services applied for can be legally offered in a
particular Member State’s market is irrelevant for the question whether the sign itself
falls foul of Article 7(1)(f) EUTMR (judgment of 13/09/2005, T-140/02, ‘Intertops’,
para. 33). Whether or not a mark is contrary to public policy or accepted principles of
morality must be determined by the intrinsic qualities of the mark applied for and not by
the circumstances relating to the conduct of the person applying for the trade mark
(judgment of 13/09/2005, T-140/02, ‘Intertops’, para. 28). In its judgment of 20/09/2011,
T-232/10, ‘Soviet Coat of Arms’, the General Court held that the concepts of ‘public
policy’ and ‘acceptable principles of morality’ must be interpreted not only with
reference to the circumstances common to all Member States but by taking into
account ‘the particular circumstances of individual Member States which are likely to
influence the perception of the relevant public within those States’ (para. 34).
The legislation and administrative practice of certain Member States can also be taken
into account in this context (i.e. for assessing subjective values), not because of their
normative value, but as evidence of facts which make it possible to assess the
perception of the relevant public in those Member States (judgment of 20/09/2011,
T-232/10, ‘Soviet Coat of Arms’, para. 57). In such a case, the illegality of the EUTM
applied for is not the determining factor for the application of Article 7(1)(f) EUTMR but
rather is of evidential value with regard to the perception of the relevant public in the
Member State(s) in question.
Considering that the specific circumstances of individual Member States may not be
widely known in the European territory, the objection letter should explain these
circumstances clearly in order to make sure that the applicant is able to fully
understand the reasoning behind the objection and is able to respond accordingly.
2.7.1
‘Public policy’
2.7.1.1 Concept and categories
This objection derives from an assessment based on objective criteria. ‘Public policy’
refers to the body of Union law applicable in a certain area, as well as to the legal order
and the state of law as defined by the Treaties and secondary EU legislation, which
reflect a common understanding on certain basic principles and values, such as human
rights. As indicated above, national legislation may also be taken into account, not
because of its normative value, but as evidence of facts which make it possible to
assess the perception of the relevant public in those Member States.
The following is a non-exhaustive list of examples of when signs will be caught by this
prohibition.
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1.
On 27/12/2001 the Council of the European Union adopted Common Position
2001/931/CFSP on the application of specific measures to combat terrorism
(OJ L 344, 28/12/2001, p. 93) later updated by Council Common Position
2009/64/CFSP (OJ L 23, 27/01/2009, p. 37 and available online at: http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:023:0025:0029:EN:PDF)
which contains a list of individuals and groups facilitating, attempting to commit or
committing terrorist acts in EU territory. Any EUTM applied for which can be
deemed to support or benefit an individual or a group on that list will be rejected
as being against public policy.
2.
Use of the symbols and names of Nazi organisations is prohibited in Germany
(§ 86a dt. StGB (German Criminal Code), BGBl. Nr. I 75/1998) and in Austria (§ 1
öst. Abzeichengesetz (Austrian Law on Insignias), BGBl. Nr. 84/1960 in
conjunction with § 1 öst. Verbotsgesetz (Austrian Prohibition Law), BGBl. Nr.
25/1947). Any EUTM applied for which uses such symbols or names will be
rejected as being against public policy.
2.7.2
Accepted principles of morality
This objection concerns subjective values, but these must be applied as objectively as
possible by the examiner. The provision excludes registration as European Union trade
marks of blasphemous, racist or discriminatory words or phrases, but only if that
meaning is clearly conveyed by the mark applied for in an unambiguous manner; the
standard to be applied is that of the reasonable consumer with average sensitivity and
tolerance thresholds (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’,
para. 21).
It is normally necessary to consider the goods and services for which registration of the
mark is sought, since the relevant public may be different for different goods and
services and, therefore, may have different thresholds with regard to what is clearly
unacceptably offensive. For example, as the Grand Board held in its decision of
06/07/2006, R 0495/2005-G – ‘SCREW YOU’, para. 29, ‘a person who is sufficiently
interested in [sex toys] to notice the trade marks under which they are sold is unlikely to
be offended by a term with crude sexual connotations.’ Nevertheless, although the
Court has held that the goods and services applied for are important for identifying the
relevant public whose perception needs to be examined, it has also made it clear that
the relevant public is not necessarily only that which buys the goods and services
covered by the mark, since a broader public than just the consumers targeted may
encounter the mark (judgment of 05/10/2011, T-526/09, ‘Paki’, paras 17 and 18
respectively). Accordingly, the commercial context of a mark, in the sense of the public
targeted by the goods and services, is not always the determining factor in whether that
mark would breach accepted principles of morality (judgment of 09/03/2012, T-417/10,
‘¡Que buenu ye! Hijoputa’, para. 24). See also decision of 15/03/2013,
R 2073/2012-4, − ‘CURVE’, paras 17-18 (T-266/13 – pending).
It is not only signs with ‘negative’ connotation that can be offensive. The banal use of
some signs with a highly positive connotation can also be offensive (e.g. terms with a
religious meaning or national symbols with a spiritual and political value, like ATATURK
for the European general public of Turkish origin (decision of 17/09/2012,
R 2613/2011-2 – ATATURK, para. 31)).
There need not be illegality for this part of Article 7(1)(f) EUTMR to be applied: there
are words or signs that would not lead to proceedings before the relevant authorities
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and courts, but that are sufficiently offensive to the general public to not be registered
as trade marks (decision of 01/09/2011, R 0168/2011-1 – ‘fucking freezing! by
TÜRPITZ’, para. 16). Furthermore, there is an interest in ensuring that children and
young people, even if they are not the relevant public of the goods and services in
question, do not encounter offensive words in shops that are accessible to the general
public. Dictionary definitions will in principle provide a preliminary indication as to
whether the word in question carries an offensive meaning in the relevant language
(decision of 01/09/2011, R 0168/2011-1 – ‘fucking freezing! by TÜRPITZ’, para. 25) but
the key factor must be the perception of the relevant public in the specific context of
how and where the goods or services will be encountered.
On the other hand, the Boards of Appeal took the view that the word KURO did not
convey to the Hungarian public the offensive meaning of the word ‘kúró’ (meaning
‘fucker’ in English), since the vowels ‘ó’ and ‘ú’ are separate letters which are distinct
from ‘o’ and ‘u’ and they are pronounced differently (decision of 22/12/2012,
R 482/2012-1 – ‘kuro’, paras 12 et seq.).
There is a clear risk that the wording of Article 7(1)(f) EUTMR could be applied
subjectively so as to exclude trade marks that are not to the examiner’s personal taste.
However, for the word(s) to be objectionable, it (they) must have a clearly offensive
impact on people of normal sensitivity (judgment of 09/03/2012, T-417/10, ‘¡Que buenu
ye! Hijoputa’, para. 21).
The concept of morality in Article 7(1)(f) EUTMR is not concerned with bad taste or the
protection of individuals’ feelings. In order to fall foul of Article 7(1)(f) EUTMR, a trade
mark must be perceived by the relevant public, or at least a significant part of it, as
going directly against the basic moral norms of the society.
There is no need to establish that the applicant wants to shock or insult the public
concerned; the objective fact that the EUTM applied for might be seen as such a shock
or insult is sufficient (decision of 23/10/2009, R 1805/2007-1 – ‘Paki’, para. 27,
confirmed by judgment of 05/10/2011, T-526/09, ‘Paki’ para. 20 et seq.).
Finally, application of Article 7(1)(f) EUTMR is not limited by the principle of freedom of
expression (Article 10 European Convention on Human Rights) since the refusal to
register only means that the sign is not granted protection under trade mark law and
does not stop the sign being used — even in business (judgment of 09/03/2012,
T-417/10, ‘HIJOPUTA’, para. 26).
Examples of rejected EUTM application s (public policy and/or morality)
Sign
Relevant Consumer
Public policy/morality
Case No
R 0176/2004-2
BIN LADIN
General consumer
Morality & public policy — the mark
applied for will be understood by the
general public as the name of the
leader of the notorious terrorist
organisation Al Qaeda; terrorist crimes
are in breach of public order and moral
principles (para. 17).
CURVE 300
General consumer
Morality — ‘CURVE’ is an offensive
and vulgar word in Romanian (it means
‘whores’).
R 0288/2012-2
CURVE
General consumer
Morality — ‘CURVE’ is an offensive
and vulgar word in Romanian (it means
‘whores’).
R 2073/2012-4
(T-266/13 –
pending)
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Sign
Public policy/morality
Case No
General consumer
Morality — ‘fucking’ is an offensive and
vulgar word in English.
R 0168/2011-1
General consumer
Morality — ‘HIJOPUTA’ is an offensive
and vulgar word in Spanish.
T-417/10
General consumer
Public policy — the Hungarian criminal
code bans certain ‘symbols of
despotism’, including the hammer and
sickle as well as the 5-pointed red star
symbolising the former USSR. This law
is not applicable by reason of its
normative value but rather as evidence
of the perception of the relevant public
(paras 59-63).
T-232/10
PAKI
General consumer
Morality — ‘PAKI’ is a racist insult in
English.
T-526/09
SCREW YOU
General consumer
(for products other
than sex products)
Morality — a substantial proportion of
ordinary citizens in Britain and Ireland
R 0495/2005-G
would find the words ‘SCREW YOU’
offensive and objectionable (para. 26).
FICKEN
General consumer
Morality — ‘FICKEN’ is an offensive
and vulgar word in German (it means
‘fuck’).
ATATURK
Relevant Consumer
Banal use of signs with a highly
positive connotation can be offensive
Average consumer in
under
Article 7(1)(f)
EUTMR.
the European
ATATURK is a national symbol with a
general public of
spiritual and political value for the
Turkish origin
European general public of Turkish
origin.
T-52/13
R 2613/2011-2
Examples of accepted EUTM application s
Sign
Relevant Consumer
Public policy/morality
Case No
R 482/2012-1
R 495/2005-G
KURO
General consumer
The fact that a foreign term, name or
abbreviation
displays
certain
similarities with an offensive word (like
kúró) is not in itself sufficient reason to
refuse the EUTM applied for (para. 20).
Hungarian vowels ‘ò’ and ‘ù’ are clearly
different from ‘o’ and ‘u’ without accent.
Furthermore, Hungarian words never
end with ‘o’ without accent (paras 1518).
SCREW YOU
General consumer
(for sex products)
A person entering a sex shop is
unlikely to be offended by a trade mark
containing crude, sexually charged
language (para. 26).
General consumer
Although ‘puta’ means ‘whore’ in
EUTM 3 798 469
Spanish, the expression DE PUTA
EUTM 4 781 662
MADRE means ‘very good’ in Spanish
EUTM 5 028 477
(slang).
DE PUTA MADRE
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2.8
Deceptiveness: Article 7(1)(g) EUTMR
2.8.1
Examination of the deceptive character
Article 7(1)(g) EUTMR provides that marks which are of such a nature as to deceive
the public, for instance, as to the nature, quality or geographical origin of the goods or
services, must not be registered.
According to the case-law relating to Article 3(1)(g) of the First Trademark Directive
(TMD), the wording of which is identical to that of Article 7(1)(g) EUTMR, the
circumstances for refusing registration referred to in Article 7(1)(g) EUTMR presuppose
the existence of actual deceit or a sufficiently serious risk that the consumer will
be deceived (judgment of 30/05/2006, C-259/04, ‘Elizabeth Emanuel’, para. 47 and
the case-law cited therein).
Pursuant to the above, the Office, as a matter of practice, makes the twin assumptions
that:
1.
2.
There is no reason to assume that a trade mark is intentionally applied for to
deceive customers. No deceptiveness objection should be raised if a nondeceptive usage of the mark is possible vis-à-vis the goods and services
specified: i.e. an assumption is made that non-deceptive use of the sign will be
made if possible,
The average consumer is reasonably attentive and should not be regarded as
particularly vulnerable to deception. An objection will generally only be raised
where the mark leads to a clear expectation which is patently contradictory to,
for instance, the nature or quality or geographical origin of the goods.
An objection should be raised when the list of goods/services is worded in such
a way that a non-deceptive use of the trade mark is impossible.
The following are two examples of marks that were found to be deceptive with regard
to all or part of the claimed goods 1.
Mark and goods
LACTOFREE
for lactose in Class 5
1
Reasoning
Case
The nature of the sign would
immediately
lead
the
relevant
consumer to believe that the product
in question, i.e. ‘lactose’, does not
contain any lactose. It is clear that if
the good being marketed under the
sign ‘LACTOFREE’ is actually lactose
itself, then the mark would be clearly
misleading.
NB: The mark is also objectionable
under 7(1)(c)
R 892/2009-1
These examples address only the issue of whether a deceptiveness objection should be raised or not.
This paragraph does not deal with possible objections under other absolute grounds for refusal.
Therefore, the possibility that a given trade mark might appear to be prima facie objectionable under
Article 7(1)(b) and/or (c) EUTMR (or other provisions for that matter) is not contemplated here.
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Mark and goods
TITAN
(German word for ‘titanium’)
for portable and relocatable buildings;
modular portable building units for use
in the construction of prefabricated
relocatable buildings; prefabricated
relocatable buildings constructed of
modular portable building units, none
of the aforesaid goods being made
from or including titanium in
Classes 6 and 19.
Reasoning
Case
The applicant, during the appeal
proceedings, in an attempt to
overcome
an
objection
of
descriptiveness, offered to restrict the
specifications in both classes by
adding, at the end, the indication none
of the aforesaid goods being made
from or including titanium. The Board
held that such a restriction, if
accepted, would have had the effect of
rendering the trade mark deceptive
from the standpoint of the Germanspeaking public, as they would
assume that the goods were made
from titanium when in reality this is not
the case.
R 789/2001-3
An objection should be raised when the list of goods/services, worded in a
detailed manner, contains goods/services for which a non-deceptive use is
impossible.
In the (invented) case of a trade mark ‘KODAK VODKA’ for vodka, rum, gin, whisky, an
objection should be raised for the specific goods for which a non-deceptive use of the
trade mark is not possible, i.e. rum, gin, whisky. Such cases are substantially different
from those (see here below) where broad wording/categories are used and where a
non-deceptive use of the sign is possible. For example, no objection would be raised
for ‘KODAK VODKA’ filed for alcoholic beverages, since this broad category includes
vodka, for which the trade mark is not deceptive.
No objection should be raised when the list of goods/services is worded in such
a broad way that a non-deceptive use is possible.
When wide categories in the list of goods/services are used, the question arises
whether an objection should be raised in relation to an entire category due to the mark
being deceptive in relation to only some goods/services falling within that category. The
policy of the Office is not to object in these circumstances. The examiner should
assume that the mark will be used in a non-deceptive manner. In other words they will
not object on the basis of deceptiveness wherever they can pinpoint (in a category) a
non-deceptive use.
Therefore, the rule is that Article 7(1)(g) EUTMR does not apply if the specification
consists of wide categories which include goods/services for which use of the
trade mark would be non-deceptive. For example, in the case of a trade mark
‘ARCADIA’ applied for wines, an objection under Article 7(1)(g) EUTMR would not be
appropriate, since the broad category wines also covers wines originating from Arcadia
(and since Arcadia — which identifies a wine-producing region in Greece — is not a
protected geographical indication at Community level, there is no obligation on the part
of the applicant to restrict the specification only to wines originating from Arcadia).
2.8.2
Market reality and consumers’ habits and perceptions
When assessing if a given trade mark is deceptive or not, account should be taken of
market reality and consumers’ habits and perceptions.
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In order to evaluate the deceptiveness of a trade mark under Article 7(1)(g) EUTMR,
account must be taken of the reality of the market (i.e. the way the goods and
services are normally distributed/held out for sale/purchased/rendered, etc.) as well as
of the consumption habits and perception of the relevant public, which is normally
composed of reasonably well-informed, observant and circumspect persons.
For example, in the (invented) trade mark ‘ELDORADO CAFÈ LATINO’ covering
coffee, preparations for use as substitutes for coffee, artificial coffee, chicory, chicory
flavourings; chocolate, preparations for use as substitutes for chocolate; tea, cocoa;
sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar,
sauces (condiments); spices; ice in Class 30, the examination should lead to the
following conclusions.




2.8.3
An objection under Article 7(1)(g) EUTMR would be justified in relation to
preparations for use as substitutes for coffee, artificial coffee, chicory, chicory
flavourings because use of the mark on these goods would be necessarily
deceptive. One would assume one was purchasing coffee and this would not in
fact be the case.
An objection under Article 7(1)(g) EUTMR would also be justified for tea. Given
that such goods may be sold in packaging quite similar to those used for coffee,
and are often bought rather hastily, it is likely that many consumers will not
indulge in analysing the wording on the packaging, but will choose these goods
from the shelf in the (erroneous) belief that they are coffee.
However, as far as coffee is concerned, there is no ‘clear contradiction’ between
the claim for coffee and the wording ‘CAFÈ LATINO’, since the general category
coffee may include also coffee originating from Latin America. Hence no
Article 7(1)(g) EUTMR objection arises for the category of coffee itself. The same
logic applies in relation to goods which could be flavoured with coffee (such as
chocolate, ices and pastry and confectionery) — an assumption of non-deceptive
use should be made, and no contradiction between the said wording and the
goods necessarily arises.
Finally, for the remainder of the goods are concerned, i.e. honey, bread, vinegar
etc., the presence of the wording ‘CAFÈ LATINO’ will not give rise to any
expectations at all. In relation to such goods, this wording will be seen as clearly
non-descriptive and hence there is no potential for actual deception. In the ‘real’
market, coffee is not displayed on the same shelves or shop sections as bread,
honey or vinegar. Furthermore, the goods in question have a different
appearance and taste and are normally distributed in different packaging.
Trade marks with geographical connotations relating to the location of
the applicant or the place of origin of the goods/services
When it comes to trade marks having certain ‘geographical’ connotations relating to the
location of the applicant or the place of origin of the goods/services, the following
should be noted.
As a general rule, the Office will not raise an objection on deceptiveness based upon
the applicant’s geographical location (address). Indeed, such a geographical location
bears, in principle, no relation to the geographical origin of the goods and services, i.e.
the actual place of production/offering of the goods and services covered by the mark.
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As an example, a figurative mark containing the words MADE IN USA for clothing in
Class 25 filed by a company having its seat in Sweden would not be open to an
objection under Article 7(1)(g) EUTMR. In such cases, the Office assumes a nondeceptive use of the mark on the part of the proprietor.
Deceptiveness would nonetheless arise in the hypothetical event that a figurative mark
containing the words MADE IN USA, filed by a company having its seat in the United
States of America, were filed for a specifically limited list of goods: clothing articles
made in Vietnam — although, in practice, such cases seem unlikely to arise.
In certain cases, the sign could evoke in the consumers’ minds some
impressions/expectations as to the geographical origin of the goods or of the designer
thereof and which may not correspond to reality. For example, trade marks such as
ALESSANDRO PERETTI or GIUSEPPE LANARO (invented examples) covering
clothing or fashion goods in general may suggest to the relevant public that these
goods are designed and produced by an Italian stylist, which may not be the case.
However, such a circumstance is not sufficient per se to render those marks
misleading. Indeed, ‘false impressions/expectations’ caused by the trade mark are not
tantamount to actual deceptiveness when the sign is merely evocative. In such cases
there is no clear contrast between the impression/expectation a sign may evoke and
the characteristics/qualities of the goods and services it covers.
2.8.4
Trade marks making reference to an ‘official’ approval, status or
recognition
It should be noted that, under the Office’s practice, trade marks that could evoke official
approval, status or recognition without giving the firm impression that the
goods/services issue from, or are endorsed by, a public body or statutory organisation,
are acceptable.
The following are two examples where the marks concerned, although allusive or
suggestive, were not found to be deceptive:
Mark and services
THE ECOMMERCE AUTHORITY
for business services, namely,
providing rankings of and other
information
regarding
electronic
commerce vendors, goods and
services via the Internet in Class 35
and providing research and advisory
services and information in the area
of electronic commerce in Class 42.
Reasoning
Case
The Board found that the trade mark
was not deceptive, as it did not
convey the firm impression that the
services issue from a governmental
or statutory organisation (the Board,
however, confirmed the refusal under
Article 7(1)(b)
EUTMR
on
the
grounds that the mark lacked
distinctive character, as it would be
perceived by the English-speaking
public merely as a simple statement
of self-promotion which claims
something about the level of
competence of the service providers).
R 803/2000-1
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Mark and services
Reasoning
for, among other things,
teaching of ski in Class 41.
The Board held that the French
consumers would understand that the
trade mark alludes to the fact that the
services are supplied in France, by a
French teaching centre, and relate to
learning skiing ‘in the French way’. It
added that the French public had no
reason to believe, simply because of
the presence of a tricolour logo (not
being a reproduction of the French
flag), that the services are supplied
by public authorities or even
authorised by such authorities.
2.8.5
Case
R 235/2009-1
confirmed by the General
Court in T-41/10
Relation with other EUTMR provisions
The above explanations aim to define the scope of application of Article 7(1)(g)
EUTMR. Although addressed in their respective sections of the Guidelines, in the
context of absolute grounds examination and of possible deceptiveness scenarios, the
following provisions may be of particular relevance.
Article 7(1)(b) and (c) EUTMR
Under the current practice of the Office, if, following a descriptiveness and/or lack of
distinctiveness objection, the EUTM applicant proposes a limitation in an attempt to
overcome it, and provided the proposed limitation meets the prescribed requirements
(unconditional request and suitably worded), the original list of goods and/or services
will be limited accordingly. However, if the limitation in question (albeit overcoming the
initial objection) has the effect of rendering the trade mark applied for deceptive, then
the examiner will have to raise a deceptiveness objection under Article 7(1)(g) EUTMR.
The following example illustrates such a scenario:
The trade mark ‘ARCADIA’ was originally applied for wines, spirits (beverages) and
liqueurs in Class 33. The examiner objected because the trade mark was descriptive of
the geographical origin of wines, to the extent that Arcadia is a Greek region known for
its wine production (however, it should be noted that Arcadia is not a protected
geographical indication). The applicant offered to limit the specification of goods to
exclude wines made in Greece or, if preferred, to include only wines produced in Italy.
The examiner held that the proposed limitation would render the trade mark deceptive
since it would convey false information as to the origin of the goods. On appeal, the
Board confirmed the reasoning of the examiner (see decision of 27/03/2000,
R 246/1999-1 – ‘ARCADIA’, para. 14).
Article 7(1)(h) EUTMR
This provision excludes from registration those EUTMs which consist of/contain flags
and other symbols of States, on the one hand, and flags and other symbols of
international intergovernmental organisations on the other, which are protected
according to Article 6ter of the Paris Convention and the inclusion of which in the trade
mark has not been expressly authorised by the competent authorities. When it comes
to the flags and other symbols of international intergovernmental organisations, the
problem arises when the public might erroneously believe that, in view of the
goods/services concerned, there is a connection between the EUTM applicant and the
international organisation whose flag or symbol appears in the EUTM.
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Article 7(1)(j) EUTMR (protected geographical indications)
This provision excludes trade marks in conflict with protected geographical indications
(PGIs) or protected geographical denominations (PDOs) protected under EU law,
national law or international agreements to which the EU or the Member State
concerned is party, where the list of the respective goods does not specify that they
have the purported geographical origin. The Office must object to EUTM applications
where the protected geographical indication is misused or which convey any other false
or misleading indication as to the provenance, origin, nature or essential qualities of the
products concerned.
Article 7(1)(k) and (l) EUTMR (traditional terms for wines and traditional specialities
guaranteed
Article 7(1)(k) and (l) EUTMR exclude from registration trade marks that are in conflict
with traditional terms for wine (TTW) and traditional specialities guaranteed (TSG),
respectively, protected by either EU legislation or international agreements to which the
EU is party. The Office must object to EUTM applications where the TTW or the TSG is
misused or which convey any other misleading indications, such as the products
qualifying for the protected TTW or TSG.
Article 17(4) EUTMR (transfer)
Under this provision, where it is clear from the transfer documents that, because of the
transfer, the EUTM is likely to mislead the public concerning the nature, quality or
geographical origin of the goods or services for which it is registered, the Office will not
register the transfer unless the successor agrees to limit (the) registration of the EUTM
to goods or services for which it is not likely to mislead (see also Part E, Section 3,
Chapter 1, paragraph 3.6).
Article 51(1)(c) EUTMR (grounds for revocation)
Whereas in examining a trade mark under Article 7(1)(g) EUTMR an examiner must
confine the assessment to the meaning conveyed by the sign vis-à-vis the
goods/services concerned (meaning that the way the sign is actually used is of no
relevance), under Article 51(1)(c) EUTMR the way the sign is used is decisive, given
that according to this provision a registered EUTM may be declared revoked if, in
consequence of the use made of the sign by its proprietor or with their consent, the
trade mark is liable to mislead the public, particularly as to the nature, quality or
geographical origin of the goods/services concerned.
2.9
Protection of flags and other symbols — Article 7(1)(h) and (i)
EUTMR
The objective of Article 6ter Paris Convention (PC) is to exclude the registration and
use of trade marks that are identical or in some way similar to state emblems or the
emblems, abbreviations and names of international intergovernmental organisations.
‘The reasons for this are that such registration or use would violate the right of the
State to control the use of symbols of its sovereignty and furthermore might mislead the
public with respect to the origin of goods to which such marks would be applied.’
(G.H.C. Bodenhausen, Guide to the application of the Paris Convention for the
Protection of Industrial Property as revised in Stockholm in 1967, page 96.). Origin in
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this regard must be understood as coming from or endorsed by the relevant
administration, not as being produced in the territory of that state or, in the case of the
EU, in the EU.
Article 7(1)(h) EUTMR therefore refers to the following symbols:


Armorial bearings, flags, other emblems, official signs and hallmarks that belong
to states and have been communicated to WIPO, although, in the case of flags,
such communication is not mandatory.
Armorial bearings, flags, other emblems, abbreviations and names of
international intergovernmental organisations that have been communicated to
WIPO, with the exception of those already the subject of international
agreements for ensuring their protection (see, for example, the Geneva
Convention for the Amelioration of the Condition of the Wounded and Sick in
Armed Forces of 12/08/1949, Article 44 of which protects the emblems of the Red
Cross on a white ground, the words ‘Red Cross’ or ‘Geneva Cross’, and
analogous emblems).
The Court of Justice has made clear that these provisions can be applied regardless of
whether the application concerns goods or services, and that the scopes of application
of Article 7(1)(h) and 7(1)(i) EUTMR are analogous. Both articles should therefore be
assumed to grant at least an equivalent level of protection, since they pursue the same
objective, that is, to prohibit the use of specific emblems of public interest without the
consent of the competent authorities (judgment of 16/07/2009 in Joined Cases
C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, paras 78, 79 and 80).
2.9.1
Protection of armorial bearings, flags, other state emblems, official
signs and hallmarks indicating control and warranty under Article 7(1)(h)
EUTMR — Article 6ter(1)(a) and (2) PC
In accordance with Article 6ter(1)(a) PC, the registration, either as a trade mark or as
an element thereof, of armorial bearings, flags, and other state emblems of the
countries of the Union (i.e. the countries to which the PC applies), or of official signs
and hallmarks adopted by states as an indication of control and warranty, as well as
any imitation from a heraldic point of view will be refused if no authorisation has been
granted by the competent authority.
The members of the World Trade Organization (WTO) enjoy the same protection
pursuant to Article 2(1) TRIPs, according to which members of the WTO must comply
with Articles 1 to 12 and 19 PC.
Therefore, to fall foul of Article 7(1)(h) EUTMR, a trade mark:


must consist solely of an identical reproduction or a ‘heraldic imitation’ of the
abovementioned symbols;
must contain an identical reproduction or a ‘heraldic imitation’ of the
abovementioned symbols.
Furthermore, the competent authority must not have given its authorisation.
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Armorial bearings consist of a design or image depicted on a shield. See the following
example.
Bulgarian armorial bearing – 6ter database No BG2
State flags usually consist of a distinctive rectangular design that is used as the symbol
of a nation. See the following example.
Croatian flag
The expression ‘other State emblems’ is rather vague. It usually indicates any emblems
constituting the symbol of the sovereignty of a state, including the escutcheons of
reigning houses as well as emblems of states included in a federal state that is party to
the Paris Convention. See the following example.
Danish state emblem — 6ter database No DK3
The purpose of official signs and hallmarks indicating control and warranty is to certify
that a state or an organisation duly appointed by a state for that purpose has checked
that certain goods meet specific standards or are of a given level of quality. There are
official signs and hallmarks indicating control and warranty in several states for
precious metals or products such as butter, cheese, meat, electrical equipment, etc.
Official signs and hallmarks may also apply to services, for instance those relating to
education, tourism, etc. See the following examples.
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Official Spanish sign for export promotion No ES1
UK hallmark for platinum articles No GB 40
It must be noted that Article 6ter PC does not protect the abovementioned symbols
against all imitations, only ‘heraldic imitations’. The notion of ‘heraldic imitation’ must be
construed in the sense that ‘… the prohibition of the imitation of an emblem applies
only to imitations of it from a heraldic perspective, that is to say, those which contain
heraldic connotations which distinguish the emblem from other signs. Thus, the
protection against any imitation from a heraldic point of view refers not to the image as
such, but to its heraldic expression. It is therefore necessary, in order to determine
whether the trade mark contains an imitation from a heraldic point of view, to consider
the heraldic description of the emblem at issue’ (see CJEU judgment of 16/07/2009 in
Joined Cases C-202/08 P and C-208/08 P, para. 48).
Consequently, when making a comparison ‘from a heraldic point of view’ within the
meaning of Article 6ter PC, account must be taken of the heraldic description of the
emblem concerned and not any geometric description of the same emblem, which is by
nature much more detailed. Indeed, if the geometric description of the emblem were
taken into account, this ‘… would lead to the emblem being refused protection under
Article 6ter(1)(a) of the Paris Convention in the event of any slight discrepancy between
the two descriptions. Secondly, the case of graphic conformity with the emblem used
by the trade mark is already covered by the first part of that provision, so that the
expression “any imitation from a heraldic point of view” must be different in its scope’
(see ibidem, para. 49).
For example, an examiner should take into account the heraldic description of the
European emblem
— ‘on an azure field a circle of twelve golden
mullets, their points not touching’ — and not its geometrical description: ‘the emblem is
in the form of a blue rectangular flag of which the fly is one and a half times the length
of the hoist. Twelve gold stars situated at equal intervals form an invisible circle whose
centre is the point of intersection of the diagonals of the rectangle. The radius of the
circle is equal to one third of the height of the hoist. Each of the stars has five points
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which are situated on the circumference of an invisible circle whose radius is equal to
one eighteenth of the height of the hoist. All the stars are upright — that is to say, with
the one point vertical and two points in a straight line at right angles to the mast. The
circle is arranged so that the stars appear in the position of the hours on the face of a
clock. Their number is invariable.’
Furthermore, armorial bearings and other heraldic emblems are drawn on the basis of
a relatively simple description of the layout and background colour that also lists the
different elements (such as a lion, an eagle, a flower, etc.) constituting the emblem and
gives information on their colour and position within the emblem. However, a heraldic
description does not give details of the design of the emblem and the specific elements
that constitute it, with the result that a number of artistic interpretations of one and the
same emblem on the basis of the same heraldic description are possible. Although
there may be differences in detail between each of those interpretations, the fact
remains that they will all be imitations ‘from a heraldic point of view’ of the emblem
concerned (T-215/06, 28/02/2008, paras 71-72).
It follows that a trade mark that does not exactly reproduce a state emblem can
nevertheless be covered by Article 6ter(1)(a) PC where it is perceived by the relevant
public as imitating such an emblem. So far as the expression ‘imitation from a heraldic
point of view’ in that provision is concerned, a difference detected by a specialist in
heraldic art between the trade mark applied for and the State emblem will not
necessarily be perceived by the average consumer who, in spite of differences at the
level of certain heraldic details, can see in the trade mark an imitation of the emblem in
question (see CJEU judgment of 16/07/2009 in Joined Cases C-202/08 P and
C-208/08 P, paras 50-51).
Furthermore, for Article 6ter(1)(a) PC to apply, it is not necessary to examine the
overall impression produced by the mark by taking into account also its other elements
(words, devices, etc.).
Indeed, Article 6ter(1)(a) PC applies not only to trade marks but also to elements of
marks that include or imitate state emblems. It is sufficient, therefore, for a single
element of the trade mark applied for to represent such an emblem or an imitation
thereof for that mark to be refused registration as an European Union trade mark (see
also judgment of 21/04/2004, T-127/02, ‘ECA’, paras 40-41).
2.9.1.1 Examination of marks consisting of or containing a state flag
There are three steps to examining marks that consist of or contain a state flag:
1
2
3
1
Find an official reproduction of the protected flag.
Compare the flag with the mark applied for. Does the mark applied for consist
solely of or contain an identical reproduction of the flag (b)? Or does the mark
consist solely of or contain a heraldic imitation of that flag (b)?
Check whether there is any evidence on file to show that registration of the flag
has been authorised by the competent authority.
Find the protected flag
As seen above, states are not obliged to include flags in the list of emblems to be
communicated to WIPO. This is because flags are supposed to be well known.
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Nevertheless, some flags have been included in the list, which is accessible via the
‘Article 6ter Structured Search’ tool made available by WIPO. Otherwise, examiners
should refer to the official websites of the relevant governments, and to encyclopaedias
and/or dictionaries for an accurate reproduction of the state flag.
2
Compare the flag with the mark applied for
(a)
Does the mark applied for consist solely of or contain an identical reproduction of
a flag? If so, proceed to the next step.
Does the mark consist solely of or contain a heraldic imitation of a flag?
(b)
In the case of flags, the mark must be compared with the heraldic description of the
flag at issue. For example, in Case T-41/10 of 05/05/2011 (ESF Ecole du ski français),
the French flag was described as a rectangular or square flag made up of three equal
vertical bands of the colours blue, white and red.
The examiner will use the heraldic description, which gives details of the layout and
background colour, lists the different elements (such as a lion, an eagle, a flower, etc.)
that constitute the flag and specifies the colour, position and proportions of the latter to
reach a conclusion on heraldic imitation.
As a rule, the flag and the mark (or the part of the mark in which the flag is reproduced)
must be quite similar in order for a heraldic imitation to be found.
See the following example where a ‘heraldic imitation’ of a flag was found:
Flag
Refused EUTM application
Swiss flag
EUTM application 8 426 876
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The use of a flag in black and white may still be considered a heraldic imitation when
the flag consists of or contains unique heraldic features. For example, the black-andwhite representation of the Canadian flag in the following example is considered to be
a heraldic imitation.
Flag
Refused EUTM application
Canadian flag
EUTM application 2 793 495
On the other hand, for flags consisting only of stripes of three colours (whether vertical
or horizontal) a black-and-white reproduction will not be considered a heraldic imitation
because flags of that kind are quite common.
As seen above, the presence of other elements in the marks is irrelevant; this is
confirmed by the Board of Appeal’s refusal of EUTM application 10 502 714.
Flag
Sign
The flags of, for example, Belgium, the Czech
Republic, France, Italy, Latvia, Austria, Finland and
Sweden.
EUTM application 10 502 714, R 1291/2012-2
‘… the flags … are all represented in the mark and will be immediately recognized as such by the public
coming from those parts of the EU, as well as many others across the relevant territory. … they do not
merge into each other in a way which dissipates their individual characteristics. It must also be noted that
the flags appearing at the bottom of the mark … are not upside down, but are presented exactly as they
would be normally.
As noted by the Court in the judgment of 16 July 2009, C-202/08 P and C-208/08 P, ‘RW feuille d’érable’
at para. 59, Article 6ter(1)(a) of the Paris Convention applies not only to trade marks but also to elements
of marks which include or imitate State emblems. It is sufficient, therefore, for a single element of the
trade mark applied for to represent such an emblem or an imitation thereof for that mark to be refused
registration as a Community trade mark … Therefore the applicant’s arguments that although the mark
contains various national flags, this is only a small part of the mark which is overwhelmed by the
presence of the additional elements and that these elements are more dominant and distinctive, fail.’
(paras 18-19)
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If an element is a different shape from a flag (e.g. circular), it is not considered to be a
heraldic imitation. Other different shapes that are not heraldic imitations are shown in
the following examples:
Flag
Accepted EUTM application
EUTM application 5 851 721
Italian flag
EUTM application 5 514 062
Swiss flag
EUTM application 6 015 473
Finnish flag
EUTM application 7 087 281
Flag
Accepted EUTM application
Swedish flag
EUTM application 8 600 132
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Danish flag
EUTM application 8 600 173
French flag
CTM 4 624 987, T-41/10
The distinction between the cases examined in EUTM application No 8 426 876
(objected to) and EUTM application No 6 015 473 (not objected to) should be noted. In
the latter, it was decided not to object because of the number of changes: a change in
the shape (from a square to a circle), a change in proportions (the white lines of the
cross in EUTM application No 6 015 473 are longer and thinner than in the flag) and a
change of colour, since the cross in EUTM application No 6 015 473 has a shadow.
3
Check whether registration has been authorised
Once the examiner has found that the mark consists of or contains a flag or a heraldic
imitation thereof, he/she must check whether there is any evidence on file to show that
the registration has been authorised by the competent authority.
Where there is no such evidence, the examiner will object to the registration of the
mark applied for. The objection will reproduce the official flag in colour and indicate the
source of the reproduction.
Such an objection can only be waived if the applicant produces evidence that the
competent authority of the state concerned has authorised registration of the mark.
Extent of the refusal: In the case of state flags, trade marks that fall foul of
Article 7(1)(h) EUTMR must be refused for all goods and services applied for.
2.9.1.2 Examination of marks consisting of or containing armorial bearings and other
state emblems
The same steps mentioned in relation to state flags are followed also when examining
marks that consist of or contain armorial bearings or other state emblems.
Nevertheless, to be protected, armorial bearings and other state symbols must be
contained in ‘the list of armorial bearings and state emblems’. This list is accessible via
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the ‘Article 6ter Structured Search’
http://www.wipo.int/ipdl/en/6ter/.
tool
made
available
by
WIPO
at
The WIPO Article 6ter database gives details of written elements and contains
references to the categories of the Vienna Classification code. Therefore, the best way
to search is by using that code.
In these cases, the protected symbol, which very often consists of or contains recurring
devices such as crowns, unicorns, eagles, lions, etc., and the mark (or the part of the
mark in which the symbol is reproduced) must be closely similar.
For background on this and heraldic descriptions, please see the explanation in
paragraph 2.8.1.1 ‘Examination of marks consisting of or containing a state flag’ above.
Here are two examples where a ‘heraldic imitation’ of a state symbol was found:
Protected emblem
Refused EUTM application
British emblem: 6ter Number: GB4
EUTM application 5 627 245, T-397/09
.
Canadian emblem: 6ter Number: CA2
EUTM application 2 785 368 (CJEU C-202/08)
The General Court noted that the supporters contained in EUTM application
No 5 627 245 were almost identical to those in the emblem protected under sign GB4.
The only difference lay in the crowns in both signs. However, the GC ruled that any
difference between the mark and the state emblem detected by an expert in heraldry
would not necessarily be perceived by the average consumer who, despite some
differences in heraldic details, can see in the mark an imitation of the emblem.
Therefore, the GC concluded that the Board was right to find that the mark applied for
contained an imitation from a heraldic perspective of emblem GB4, protected under
Article 6ter of the Paris Convention (Case T-397/09, paras 24-25).
In the example reproduced below a ‘heraldic imitation’ of state emblems was found by
the examiner. However, the decision was annulled by the Board which considered that
the sign applied for is not identical to the national emblem of Ireland. It does not contain
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an imitation of the national emblems of Ireland either and it does not reproduce
characteristic heraldic features of these emblems (R 0139/2014-5, para. 16):
State emblem
EUTM application
Irish state emblems: 6ter Numbers: IE 11 — IE 14
EUTM application 11 945 797
It should also be noted that black-and-white reproductions of armorial bearings and
other state emblems may still be considered heraldic imitations when the protected
symbol consists of or contains unique heraldic features (see the example of the
Canadian emblem).
Furthermore, the presence of other elements in the rejected marks is irrelevant.
There is even a heraldic imitation when the protected symbol is only partially
reproduced as long as what is partially reproduced represents the significant
element(s) of the protected symbol and (a) unique heraldic feature(s).
The following is an example of a partial heraldic imitation because the significant
element of the protected symbol, the eagle with the arrows over the emblem, is a
unique heraldic device and its heraldic characteristics are imitated in the EUTM
application:
Protected emblem
Refused EUTM applications
Emblem of the Justice Department
of the USA; 6ter Number: US40
EUTM application 4 820 213
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In the following example there is no heraldic imitation of a state emblem:
Protected emblem
Accepted EUTM application
6ter number: AT10
EUTM application 8 298 077
EUTM application No 8 298 077 is not a heraldic imitation of the Austrian symbol
because its shape is different and the lines inside the white cross in the Austrian
symbol are not present in the EUTM application.
Once the examiner has found that a mark reproduces a symbol (or is a heraldic
imitation thereof), they must check whether there is any evidence on file to show that
registration has been authorised by the competent authority.
Where there is no such evidence, the examiner will object to the registration of the
mark applied for. The objection will reproduce the protected symbol, quoting its 6ter
number.
Such an objection can only be waived if the applicant produces evidence that the
competent authority of the state concerned has authorised registration of the mark.
Extent of the refusal: In the case of state symbols, trade marks that fall foul of
Article 7(1)(h) EUTMR must be refused for all goods and services applied for.
2.9.1.3 Examination of marks consisting of or containing official signs and hallmarks
indicating control and warranty
The steps to be followed by the examiner are the same as for the state flags, protected
armorial bearings and other state emblems mentioned above.
However, the extent of the refusal is limited. Trade marks that consist of or contain an
identical reproduction/heraldic imitation of official signs and hallmarks indicating control
and warranty will be refused only for goods that are identical or similar to those to
which said symbols apply (Article 6ter(2) PC).
2.9.2
Protection of armorial bearings, flags, other emblems, abbreviations
and names of international intergovernmental organisations under
Article 7(1)(h) EUTMR — Article 6ter(1)(b) and (c) PC
In accordance with Article 6ter(1)(b) and (c) PC, the registration, either as a trade mark
or as an element thereof, of armorial bearings, flags, other emblems, abbreviations and
names of international intergovernmental organisations (of which one or more countries
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of the Paris Union is/are member(s)) or any imitation from a heraldic point of view will
be refused if no authorisation has been granted by the competent authority.
The members of the WTO enjoy the same protection pursuant to Article 2(1) TRIPs,
according to which members of the WTO must comply with Articles 1 to 12 and 19 of
the Paris Convention.
Furthermore, the trade mark should be of such a nature as to suggest to the public that
there is a connection between the organisation concerned and the armorial bearings,
flags, emblems, abbreviations or names, or to mislead the public as to the existence of
a connection between the owner and the organisation.
International intergovernmental organisations (IGOs) include bodies such as the United
Nations, the Universal Postal Union, the World Tourism Organization, WIPO, etc.
In this respect, the European Union must be considered neither as an international
organisation in the usual sense nor as an association of states, but rather as a
‘supranational organisation’, i.e. an autonomous entity with its own sovereign rights and
a legal order independent of the Member States, to which both the Member States
themselves and their nationals are subject within the EU’s areas of competence.
On the one hand, the Treaties have led to the creation of an independent Union to
which the Member States have ceded some of their sovereign powers. The tasks
allotted to the EU are very different from those of other international organisations.
While the latter mainly have clearly defined tasks of a technical nature, the EU has
areas of responsibility that together constitute essential attributes of statehood.
On the other hand, the EU institutions too only have powers in certain areas to pursue
the objectives specified in the Treaties. They are not free to choose their objectives in
the same way as a sovereign state. Moreover, the EU has neither the comprehensive
jurisdiction enjoyed by sovereign states nor the powers to establish new areas of
responsibility (‘jurisdiction over jurisdiction’).
Notwithstanding the particular legal nature of the EU, and for the sole purpose of the
application of Article 7(1)(h) EUTMR, the European Union is likened to an international
organisation. In practice, account will be taken of the fact that the EU’s field of activity
is so broad (judgment of 15/01/2013, T-413/11, ‘EUROPEAN DRIVESHFT
SERVICES’, para. 69) that the examiner is very likely to find a link between the goods
and services in question and the EU’s activities.
The most relevant EU flags and symbols, protected by the Council of Europe, are
shown here:
6ter number: QO188
6ter number: QO189
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The following have been protected for the Commission:
6ter number: QO245
6ter number: QO246
6ter number: QO247
The following have been protected for the European Central Bank:
6ter number: QO852
6ter number: QO867
There are four steps to examining marks that contain the armorial bearing, flag or other
symbols of an international intergovernmental organisation.
1
2
3
4
1
Find an official reproduction of the protected symbol (which may be an
abbreviation or name).
Compare the symbol with the mark applied for.
Check whether the mark applied for suggests to the relevant public that there is a
connection between the owner and the international organisation or misleads the
public as to the existence of such a connection.
Check whether there is any evidence on file to show that registration has been
authorised by the competent authority.
Find the protected symbol (or abbreviation or name)
To be protected, the symbols of international intergovernmental organisations must be
incorporated in the relevant list. Unlike the situation with state flags, this requirement
also applies to international organisations’ flags.
The relevant database is accessible via the ‘Article 6ter Structured Search’ tool
provided by WIPO. In this case too, the best way to search is by using the Vienna
Classification code.
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2
Compare the symbol with the mark applied for
Does the mark applied for consist solely of or contain an identical reproduction of the
protected symbol of an international intergovernmental organisation Or does the mark
applied for consist of or contain a heraldic imitation thereof?
(a)
Does the mark applied for consist solely of or contain an identical reproduction of
the protected symbol? If so, proceed to the next step.
Does the mark applied for consist solely of or contain a heraldic imitation thereof?
(b)
The test is the same as that for state flags and symbols, that is, the protected symbol
and the mark (or the part of the mark in which the protected symbol is reproduced)
must be closely similar. The same applies to abbreviations and names of international
intergovernmental organisations (see decision R 1414/2007-1 – ‘ESA’).
The following marks were rejected because they were considered to contain ‘heraldic
imitations’ of the European Union flag protected under QO188:
EUTM application 2 305 399
EUTM application 448 266
EUTM application 6 449 524
EUTM application 7 117 658
EUTM application 1 106 442
(T-127/02)
EUTM 4 081 014 (1640 C)
EUTM application 2 180 800
(T-413/11)
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For heraldic imitations of the European Union flag (QO188 above), it is considered
relevant that (a) there are 12 five-pointed stars, (b) the stars are in a circle and are not
touching each other, and (c) the stars contrast with a darker background.
In particular, it must be taken into account that the ‘device in the form of twelve stars
arranged in a circle is the most important element of the European Union emblem (‘the
emblem’) because it conveys strong messages: (a) the circle of gold stars symbolises
solidarity and harmony between the peoples of Europe and (b) the number twelve
evokes perfection, completeness and unity. The other element of the emblem is a
background suitably coloured to highlight the device’ (see BoA decision in case
R 1401/2011-1, para. 21).
It follows from the above that the representation of the EU flag in black and white may
still be considered a heraldic imitation when the stars contrast with a dark background
in such a way as to give the impression of being a black-and-white reproduction of the
EU flag (see EUTM application 1 106 442 above).
In contrast, the following example illustrates a case where the black-and-white
reproduction of a circle of stars does not give the impression of being a black-and-white
reproduction of the EU flag:
The following three cases are not considered to be heraldic imitations of the European
Union flag because they do not reproduce twelve stars in a circle (i.e. both marks were
accepted):
EUTM application 5 639 984
EUTM application 6 156 624
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The following is not a heraldic imitation because, although the stars are yellow, there is
no blue (or dark-coloured) background:
3
Check whether the mark applied for suggests to the relevant public that there is a
connection between the owner and the international organisation or misleads the
public as to the existence of such a connection.
A connection is suggested not only where the public would believe that the goods or
services originate with the organisation in question, but also where the public could
believe that the goods or services have the approval or warranty of, or are otherwise
linked to, that organisation (see judgment of 15/01/2013, T-413/11, ‘EUROPEAN
DRIVESHAFT SERVICES’, para. 61).
In order to assess the circumstances properly, the examiner must take into account the
following:



the goods and/or services covered by the EUTM application;
the relevant public;
the overall impression conveyed by the mark.
With regard to the European Union flag, the examiner must evaluate whether there is
any overlap between the claimed goods and/or services and the European Union’s
activities, bearing in mind that the European Union is active in numerous sectors and
regulates goods and services in all fields of industry and commerce, as is clear from
the wide variety of Directives that it has adopted. Likewise, the examiner must take into
account that even average consumers could be aware of such activities, which means,
in practice, that the examiner is very likely to find a link in most cases.
Finally, in contrast to Article 6ter(1)(a) PC, for which it is sufficient for the sign to consist
of or contain the emblem or a heraldic imitation thereof, Article 6ter(1)(c) PC requires
an overall assessment.
It follows that, unlike for state emblems and flags, the examiner must take into account
also the other elements of which the mark is composed. For it cannot be ruled out that
all the other elements of the sign could lead to the conclusion that the public would not
connect the sign with an international intergovernmental organisation (judgment of
15/01/2013, T-413/11, ‘EUROPEAN DRIVESHAFT SERVICES’, para. 59).
Still with regard to the EU flag, it must be noted that, as a rule, word elements such as
‘EURO’/‘EUROPEAN’ in an EUTM application are likely to suggest a connection even
more, since they could be perceived as implying an official EU agency’s approval,
quality control or warranty services for the claimed goods and services.
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Here are two examples of where a connection with the EU was found:
G&S
Class 16: Periodical and other publications
Class 42: Preparation of reports or studies relating to cars, motorcycles and
bicycles
Reasoning
The mark was refused for all the goods and services for the following reasons:
(26) Consumers in this market are aware of how important it is for companies that
provide surveys and reports on expensive and potentially dangerous goods like
vehicles to be credible. Consumers may also be aware that the European Union
itself is involved in such activities through its association with Euro NCAP, which
provides motoring consumers with independent assessments of the safety and
performance of cars sold on the European market. Given these facts, and the fact
that the proprietor’s mark contains a recognisable heraldic element of the
European emblem, it is likely that the public would assume that the inclusion of
the twelve gold stars of the EU emblem in the EUTM pointed to a connection
between the proprietor and the EU.
G&S
Reasoning
Class 9: Computer hardware, computer software, recorded data carriers.
Class 41: Arranging and conducting of colloquiums, seminars, symposiums,
congresses and conferences; providing of tuition, instruction, training; consultancy
on training and further training.
Class 42: Creating, updating and maintenance of computer programs; computer
program design; consultancy in the field of computers; rental of computer
hardware and computer software; leasing access time to a computer database.
The mark was refused for all the goods and services for the following reasons:
The Board of Appeal found that, contrary to what the applicant claimed, there was
some overlap between the goods and services offered by the applicant and the
activities of the Council of Europe and the European Union. The Board of Appeal
referred, inter alia, to the Official Journal of the European Union, which is
available on CD-ROM (i.e. compact disc with a read-only memory), to seminars,
training programmes and conferences offered by the Council of Europe and the
European Union in a variety of areas, and to a large number of databases made
available to the public by those institutions, in particular EUR-Lex.
Given the wide variety of services and goods that may be offered by the Council
of Europe and the European Union, it cannot be ruled out, for the kind of goods
and services for which registration was sought, that the relevant public might
believe that there is a connection between the applicant and those institutions.
Accordingly, the Board of Appeal was right to find that registration of the mark
sought was likely to give the public the impression that there was a connection
between the mark sought and the institutions in question.
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4
Check whether registration has been authorised
Where there is no evidence that registration of the mark applied for has been
authorised, the examiner will object to its registration. The objection must reproduce
the protected symbol, quoting its 6ter number.
The examiner must also indicate the refused goods and services clearly and give
reasons why the mark suggests to the public a connection with the organisation
concerned.
Such an objection can only be waived if the applicant provides evidence that the
competent authority has authorised registration of the mark.
Extent of the refusal: In the case of flags and symbols of international
intergovernmental organisations, the refusal must specify the goods and/or services
affected, that is, those for which the public would, according to the examiner, see a
connection between the mark and an organisation.
2.9.3
Protection of badges, emblems or escutcheons other than those
covered by Article 6ter of the Paris Convention under Article 7(1)(i)
EUTMR
In accordance with Article 7(1)(i) EUTMR, trade marks will not be registered if they
include badges, emblems or escutcheons other than those that are covered by
Article 6ter of the Paris Convention and are of particular public interest, unless the
competent authority has consented to their registration.
As seen above, Article 7(1)(i) EUTMR refers to all other badges, emblems or
escutcheons that have not been communicated in accordance with Article 6ter(3)(a)
PC regardless of whether they are the emblems of a state or international
intergovernmental organisation within the meaning of Article 6ter(1)(a) or (b) PC or of
public bodies or administrations other than those covered by Article 6ter PC, such as
provinces or municipalities.
Furthermore, according to the case-law, Article 7(1)(i) and Article 7(1)(h) EUTMR both
have a similar scope of application and grant at least equivalent levels of protection.
This means that Article 7(1)(i) EUTMR applies not only where the abovementioned
symbols are reproduced identically as a trade mark or a part thereof, but also where
the mark consists of or contains a heraldic imitation of those symbols. Any other
interpretation of this provision would result in less protection being provided by
Article 7(1)(i) EUTMR than by Article 7(1)(h) EUTMR. Following the same line of
reasoning, Article 7(1)(i) EUTMR applies where the mark is liable to mislead the public
as to the existence of a connection between the owner of the trade mark and the body
to which the abovementioned symbols refer. In other words, the protection afforded by
Article 7(1)(i) EUTMR is conditional on a link between the mark and the symbol.
Otherwise, trade marks to which Article 7(1)(i) EUTMR applies, would obtain broader
protection than under Article 7(1)(h) EUTMR (judgment of 10/07/2013, Case T-3/12
‘MEMBER OF EURO EXPERTS’).
Article 7(1)(i) EUTMR does not define symbols of ‘particular public interest’. However, it
is reasonable to assume that the nature of these could vary and could include, for
example, religious symbols, political symbols or symbols of public bodies or
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administrations other than those covered by Article 6ter PC, such as provinces or
municipalities. In any case, the ‘particular public interest’ involved must be reflected in
a public document, for example a national or international legal instrument, regulation
or other normative act.
The General Court stated that a ‘particular public interest’ existed when the emblem
had a particular link with one of the activities carried out by an international
intergovernmental organisation (judgment of 10/07/2013, T-3/12, ‘MEMBER OF EURO
EXPERTS’, para. 44). In particular, the Court specified that Article 7(1)(i) EUTMR
applied also when the emblem merely evoked one of the fields of activity of the
European Union, and even if that activity concerned only some of the EU states (see
ibidem, paras 45-46).
This confirms that the protection afforded by Article 7(1)(i) EUTMR applies also to
symbols that are of particular public interest in only a single Member State or part
thereof (Article 7(2) EUTMR).
There are four steps to examining marks that contain badges, emblems and
escutcheons of particular public interest.
1
2
3
4
1
Find the symbol of particular public interest.
Compare the symbol with the mark applied for.
Check whether the mark applied for suggests to the relevant public that there is a
connection between the owner and the authority to which the symbol refers or
misleads the public as to the existence of such a connection.
Check whether there is any evidence on file to show that registration has been
authorised by the appropriate authority.
Find the symbol of particular public interest.
At present, there is no list or database allowing examiners to identify which symbols
are of particular public interest, especially in a Member State or part thereof. Therefore,
third party observations are likely to remain the source of many objections to such
symbols.
One example of a symbol of particular public interest is the Red Cross, which is
protected by the Convention for the Amelioration of the Condition of the Wounded and
Sick in Armed Forces in the Field, signed in Geneva (http://www.icrc.org/ and
http://www.icrc.org/Web/Eng/siteeng0.nsf/htmlall/genevaconventions).
The following symbols are protected under the Geneva Convention:
Apart from the symbols, their names are also protected (from left to right) as follows:
‘Red Cross’, ‘Red Crescent’ and ‘Red Crystal’.
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Another example of a symbol of particular public interest is the Olympic symbol as
defined in the Nairobi Treaty on the Protection of the Olympic Symbol. According to the
definition in the Nairobi Treaty, ‘the Olympic symbol consists of five interlaced rings:
blue, yellow, black, green and red, arranged in that order from left to right. It consists of
the Olympic rings alone, whether delineated in a single colour or in different colours.’
The following symbol was considered not to be a symbol of particular public interest:
The recycling symbol (on the left) was not considered to be protected under this
provision because it is a commercial symbol.
2
Compare the symbol with the mark applied for.
Does the mark applied for consist solely of or contain an identical reproduction of the
symbol of particular public interest? Or does the mark applied for consist of or contain a
heraldic imitation thereof?
(a)
(b)
Does the mark applied for consist solely of or contain an identical reproduction of
the symbol? If so, proceed to the next step.
Does the mark applied for consist solely of or contain a heraldic imitation of the
symbol?
The test is the same as the one for flags and symbols of international
intergovernmental organisations, that is, the symbol and the mark (or the part of the
mark in which the symbol is reproduced) must be quite similar.
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The following are examples of marks that were rejected because they contained the
Red Cross symbol or a heraldic imitation thereof.
Refused EUTM application s
WO 964 979
EUTM application 2 966 265
EUTM application 5 988 985
On the other hand, a number of well-known red crosses have traditionally been used
and are still in use, the incorporation of which in a mark would not be considered a
reproduction of the ‘Red Cross’. Examples of these famous crosses include the
following:
Templar cross
St George’s cross
Maltese cross
The following EUTM was accepted because it contained two reproductions of the
Templar cross.
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A mark which contains a cross in black and white (or shades of grey) is not
objectionable. Nor is a cross in a colour other than red objectionable under
Article 7(1)(i) EUTMR.
Accepted EUTM application s
EUTM application 8 986 069
3
EUTM application 9 019 647
EUTM application 9 025 768
Check whether the mark applied for suggests to the relevant public that there is a
connection between the owner and the authority to which the symbol refers or
misleads the public as to the existence of such a connection.
A connection is suggested not only where the public would believe that the goods or
services originate with the authority in question, but also where the public could believe
that the goods or services have the approval or warranty of, or are otherwise linked to,
that authority (see GC judgment of 10/07/2013, T-3/12, ‘MEMBER OF EURO
EXPERTS’, para. 78).
In order to assess the circumstances properly, the examiner must, as above, take into
account the following:



the goods and/or services covered by the EUTM application;
the relevant public;
the overall impression conveyed by the mark.
The examiner must evaluate whether there is any overlap between the claimed goods
and/or services and the activities of the authority at issue and whether the relevant
public could be aware of it.
In particular, with regard to the European Union, the examiner must take into account
that the latter is active in numerous fields, as is clear from the wide variety of Directives
that it has adopted.
Furthermore, the examiner must also take into account the other elements of which the
mark is composed. For it cannot be ruled out that all the other elements of the sign
could lead to the conclusion that the public would not connect the sign with the
authority concerned (see judgment of 10/07/2013, T-3/12, ‘MEMBER OF EURO
EXPERTS’, para. 107).
Still with regard to the EU, it must be noted that, as a rule, word elements such as
‘EURO’/‘EUROPEAN’ in an EUTM application are likely to suggest a connection even
more, since they could be perceived as implying EU approval (see judgment of
10/07/2013, T-3/12, ‘MEMBER OF EURO EXPERTS’, para. 113).
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For example, the General Court (in Case T-3/12) confirmed that the following mark (C
EUTM application TMA No 6 110 423, covering Classes 9, 16, 35, 36, 39, 41, 42, 44
and 45)
fell foul of Article 7(1)(i) EUTMR since it contained a (heraldic) imitation of the ‘Euro’
symbol.
4
Check whether registration has been authorised.
Is there any evidence on file that the appropriate authority has authorised registration?
Where there is no such evidence, the examiner will object to the registration of the
mark applied for. The objection will reproduce the symbol and provide the applicant
with all necessary details and, in particular, information on why the symbol is of
‘particular public interest’ (for example, if protected by an international instrument, a
reference to that instrument; in the case of the Red Cross this is the Convention for the
Amelioration of the Condition of the Wounded and Sick in Armed Forces in the
Field, signed in Geneva (http://www.icrc.org/ and http://www.icrc.org/Web/Eng/siteeng0
.nsf/htmlall/genevaconventions)).
Such an objection can only be waived if the applicant submits evidence that the
appropriate authority has consented to registration of the mark.
Extent of the refusal: In the case of symbols of particular public interest, the refusal
must specify the goods and/or services affected, that is, those for which the public
would, according to the examiner, see a connection between the mark and the
authority.
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2.10
Article 7(1)(j) EUTMR
Article 7(1)(j) EUTMR provides for the refusal of EUTMs that are excluded from
registration pursuant to national or EU legislation or international agreements to which
the EU or the Member State concerned is party, providing for protection of designations
of origin and geographical indications.
As regards EU legislation protecting designations of origin and geographical
indications, the following EU regulations are currently in place:




Regulation (EU) No 1308/2013 2 on the protection of geographical indications
wines
Regulation (EU) No 251/2014 3 on the protection of geographical indications
aromatised wines
Regulation (EC) No 110/2008 4 on the protection of geographical indications
spirit drinks
Regulation (EU) No 1151/2012 5 on the protection of geographical indications
agricultural products and foodstuffs
for
for
for
for
As a consequence, Article 7(1)(j) EUTMR applies where protected designations of
origin (PDOs) or protected geographical indications PGIs) have been registered under
the procedure laid down by these EU regulations. Importantly, PDOs/PGIs registered at
EU level can originate from EU Member States, but also from third countries.
Article 7(1)(j) EUTMR also applies to EUTMs that are in conflict with third-country
PGIs/PDOs that enjoy protection in the EU through international agreements to
which the EU is a party (see paragraph 2.10.5 below).
As regards national legislation referred to in Article 7(1)(j) EUTMR, it is the Office
interpretation that it exclusively relates to national legislation providing for the
protection of PDOs/PGIs in those areas where there is not an uniform system of EU
protection, namely those areas not covered by the abovementioned EU regulations.
For the purposes of these Guidelines, they will be referred to as ‘non-agricultural
PDOs/PGIs’ (e.g. handicrafts).
As regards international agreements concluded by Member States only, and by
analogy to the Office’s interpretation of Article 7(1)(j) EUTMR as far as national law is
concerned, the Office considers that the reference to an ‘international agreement to
which the Member State concerned is party’ should be interpreted as international
agreements (including the Lisbon Agreement) in those areas where no uniform EU
protection is in place, namely non-agricultural products (see paragraph 2.10.5 below).
2
Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013
establishing a common organisation of the markets in agricultural products.
3
Regulation (EU) No 251/2014 of the European Parliament and of the Council of 26 February 2014 on the
definition, description, presentation, labelling and the protection of geographical indications of aromatised
wine products and repealing Council Regulation (EEC) No 1601/91
4
Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the
definition, description, presentation, labelling and the protection of geographical indications of spirit
drinks and repealing Council Regulation (EEC) No 1576/89.
5
Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on
quality schemes for agricultural products and foodstuffs. It replaced and repealed Regulation (EC)
No 510/2006.
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2.10.1 General remarks on EU Regulations
2.10.1.1 Definition of geographical indications under EU Regulations
As regards spirit drinks, according to Article 15(1) of Regulation (EC) No 110/2008, a
‘geographical indication’ is an indication that identifies a spirit drink as originating in the
territory of a country, or a region or locality in that territory, where a given quality,
reputation or other characteristic of that spirit drink is essentially attributable to its
geographical origin.
As regards wines, according to Article 93 of Regulation (EU) No 1308/2013:
(a)
‘designation of origin’ means the name of a region, a specific place or, in
exceptional cases, a country used to describe a wine that complies with the
following requirements:
(i)
(ii)
(iii)
(iv)
(b)
its quality and characteristics are essentially or exclusively due to a
particular geographical environment with its inherent natural and human
factors;
the grapes from which it is produced come exclusively from this
geographical area;
its production takes place in this geographical area; and
it is obtained from vine varieties belonging to Vitis vinifera.
‘geographical indication’ means an indication referring to a region, a specific
place or, in exceptional cases, a country, used to describe a wine that complies
with the following requirements:
(i)
(ii)
(iii)
(iv)
it possesses a specific quality, reputation or other characteristics
attributable to that geographical origin;
at least 85 % of the grapes used for its production come exclusively from
this geographical area;
its production takes place in this geographical area; and
it is obtained from vine varieties belonging to Vitis vinifera or a cross
between the Vitis vinifera species and other species of the genus Vitis.
As regards aromatised wines, according to Article 2 of Regulation (EU) No 251/2014, a
‘geographical indication’ means an indication that identifies an aromatised wine product
as originating in a region, a specific place, or a country, where a given quality,
reputation or other characteristics of that product is essentially attributable to its
geographical origin.
Finally, as regards agricultural products and foodstuffs, pursuant to Article 5 of
Regulation (EU) No 1151/2012, a ‘designation of origin’ is a name that identifies a
product:
1.
2.
3.
originating in a specific place, region or, in exceptional cases, a country;
whose quality or characteristics are essentially or exclusively due to a particular
geographical environment with its inherent natural and human factors; and
the production steps of which all take place in the defined geographical area.
A ‘geographical indication’ is a name that identifies a product:
1.
originating in a specific place, region or country;
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2.
3.
whose given quality, reputation or other characteristic is essentially attributable to
its geographical origin; and
of which at least one of the production steps takes place in the defined
geographical area.
The difference between PGIs and PDOs is that the latter have a closer link with the
area. In the foodstuffs sector, PDO is the term used to describe foodstuffs that are
produced, processed and prepared in a given geographical area using recognised
know-how. A PGI indicates a link with the area in at least one of the stages of
production, processing or preparation. PDOs therefore have a stronger link with the
area.
This distinction, however, does not affect the scope of protection, which is the same for
PDOs and PGIs. In other words, Article 7(1)(j) EUTMR applies equally to all
designations covered by Regulation (EU) No 1308/2013 on wines and Regulation (EU)
No 1151/2012 on agricultural products and foodstuffs, regardless of whether they are
registered as PDOs or as PGIs. Regulation (EC) No 110/2008 on spirits and
Regulation (EU) No 251/2014 on aromatised wines, however, cover only PGIs, not
PDOs.
In this respect, it must also be underlined that the concepts of PDO and PGI differ from
a ‘simple indication of geographical provenance’. For the latter, there is no direct
link between a specific quality, reputation or other characteristic of the product and its
specific geographical origin, with the result that it does not come within the scope of
Article 93 of Regulation (EU) No 1308/2013, Article 2 of Regulation (EU) No 251/2014,
Article 15(1) of Regulation (EC) No 110/2008 and Article 5(2) of Regulation (EU)
No 1151/2012 (see, by analogy, judgment of 07/11/2000, C-312/98, ‘Warsteiner
Brauerei Haus Cramer’, paras 43-44). For example, ‘Rioja’ is a PDO for wines since it
designates a wine with particular characteristics that comply with the definition of a
PDO. However, wine produced in ‘Tabarca’ (a ‘simple geographical indication’
designating a small island close to Alicante) cannot qualify for a PDO/PGI unless it
meets specific requirements. Similarly, ‘Queso Manchego’ is a PDO for cheese since it
designates a product with particular characteristics that comply with the definition of a
PDO. However, ‘Queso de Alicante’ (a ‘simple geographical indication’) cannot qualify
for a PDO/PGI since it does not enjoy such characteristics and requirements
Protection is granted to PDOs/PGIs in order, inter alia, to protect the legitimate
interests of consumers and producers. In particular, the specific objectives of
protecting designations of origin and geographical indications are to secure a fair return
for farmers and producers for the qualities and characteristics of a given product, or of
its mode of production, and to provide clear information on products with specific
characteristics linked to geographical origin, thereby enabling consumers to make more
informed purchasing choices (see recital 18 of Regulation (EU) No 1151/2012).
Moreover, their protection aims at ensuring that they are used fairly and at preventing
practices liable to mislead consumers (see recital 29 of Regulation (EU)
No 1151/2012).
2.10.1.2 Relevant provisions governing conflicts with trade marks
As regards wines, according to Article 102(1) of Regulation (EU) No 1308/2013, the
registration of a trade mark that contains or consists of a protected designation of origin
or a geographical indication that does not comply with the product specification
concerned or the use of which falls under Article 103(2), and that relates to a product
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falling under one of the categories listed in Part II of Annex VII must be refused if the
application for registration of the trade mark is submitted after the date of submission of
the application for protection of the designation of origin or geographical indication to
the Commission and the designation of origin or geographical indication is
subsequently protected.
As regards aromatised wines, according to Article 19(1) of Regulation (EU)
No 251/2014, the registration of a trade mark, the use of which falls under Article 20(2)
and relates to an aromatised wine product must be refused if the application for
registration of the trademark is submitted after the date of submission of the application
for protection of the geographical indication to the Commission and the geographical
indication is subsequently protected.
As regards spirit drinks, according to Article 23(1) of Regulation (EC) No 110/2008, ‘the
registration of a trade mark which contains or consists of a geographical indication
registered in Annex III shall be refused or invalidated if its use would lead to any of the
situations referred to in Article 16’.
Finally, according to Article 14(1) of Regulation (EU) No 1151/2012, agricultural
products and foodstuffs, ‘Where a designation of origin or a geographical indication is
registered under this Regulation, the registration of a trade mark the use of which
would contravene Article 13(1) and which relates to a product of the same type must be
refused if the application for registration of the trade mark is submitted after the date of
submission of the registration application in respect of the designation of origin or the
geographical indication to the Commission’.
Article 103(2) of Regulation (EU) No 1308/2013, Article 20 of Regulation (EU)
No 251/2014, Article 16 of Regulation (EC) No 110/2008 and Article 13(1) of
Regulation (EU) No 1151/2012 set out the situations that infringe the rights deriving
from a PDO/PGI: (i) direct or indirect commercial use of the PDO/PGI; (ii) misuse,
imitation or evocation; (iii) other misleading practices.
In light of the above provisions, three cumulative conditions are necessary for
Article 7(1)(j) EUTMR in combination with the EU Regulations to apply.
1.
2.
3.
The PDO/PGI in question must be registered at EU level (see paragraph 2.10.2
below).
Use of the EUTM that consists of or contains a PDO/PGI for wines or agricultural
products and foodstuffs, or a PGI for spirits must constitute one of the situations
provided for in Article 103(2) of Regulation (EU) No 1308/2013, Article 20(2) of
Regulation (EU) No 251/2014 or in Article 16 of Regulation (EC) No 110/2008
(see paragraph 2.10.3 below).
The EUTM application must include goods that are identical or ‘comparable’ to
the goods covered by the PDO/PGI. Reference is also made below to how goods
can be restricted in order to waive an objection (see paragraph 2.10.4 below).
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2.10.2 Relevant PDOs/PGIs under EU Regulations
Article 7(1)(j) EUTMR in combination with the EU Regulations applies where
PDOs/PGIs (either from an EU Member State or from a third country) have been
registered under the procedure laid down by Regulations No 1308/2013, No 251/2014,
No 110/2008 and No 1151/2012.

Relevant information about PDOs/PGIs for wines can be found in the ‘E-Bacchus’
database maintained by the Commission, which can be accessed through the
internet at http://ec.europa.eu/agriculture/markets/wine/e-bacchus/.
Currently, there are only five PGI’s for aromatised wines: Nürnberger Glühwein,
Samoborski bermet, Thüringer Glühwein, Vermouth de Chambéry, Vermouth di
Torino6. In the future, and pursuant to Article 21 of Regulation (EU) No 251/2014,
the Commission will establish an electronic register of the PGIs protected under
this Regulation. This register is not in place yet.
PGI’s for spirit drinks are listed in Annex III of Regulation No 110/2008
(Article 15(2) of Regulation No 110/2008), as amended, which can be accessed
at http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32012R0164&
from=EN. The Commission also maintains a database, ‘E-Spirit-Drinks’,
accessible at http://ec.europa.eu/agriculture/spirits/. However, this is not an
official register and is, therefore, only informative in character.
Relevant information about PDOs/PGIs for agricultural products and foodstuffs
registered under Regulation (EU) No 1151/2012 can be found in the
database ‘DOOR’ maintained by the Commission, which can be accessed at
http://ec.europa.eu/agriculture/quality/door/list.html.



Protection is granted solely to the name of a PDO/PGI as registered (see Article 13(1)
of Regulation (EU) No 1151/2012) and does not extend ipso iure to the names of
subregions, subdenominations, local administrative areas or localities in the area
covered by that PDO/PGI. In this respect, and in particular as regards wines, a
distinction must be made between the doctrine of the General Court in judgment of
11/05/2010, T-237/08, ‘Cuvée Palomar’ and the current legal framework. That
judgment refers to a system of Member State competencies on the designation of
geographical indications for wines that existed under previous Regulation (EC)
No 1493/1999 but is no longer in force. According to Article 67 of Commission
Regulation (EC) No 607/2009 (see also Article 120(1)(g) of Regulation (EU)
No 1308/2013), the names of those small geographical areas are now considered
merely optional particulars on labels.
2.10.2.1 Relevant point in time
Article 7(1)(j) EUTMR applies only for PDOs/PGIs that were applied for before the
EUTM application and are registered at the time the EUTM application is examined.
The relevant dates to establish the priority of a trade mark and a PDO/PGI are the date
of application of the EUTM application (or the so-called Paris Convention priority, if
claimed) and the date of application for protection of a PDO/PGI to the Commission
respectively.
Notwithstanding the above, and in view of the fact that the vast majority of applications
for PDO/PGI usually mature in a registration, an objection will be raised when the
6
See http://ec.europa.eu/agriculture/quality/documents-links/pdf/rgi-aromatised-wine-products_en.pdf.
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PDO/PGI was applied for before the filing date (or the priority date, if applicable) of the
EUTM application but had not yet been registered at the time of examining the EUTM
application. However, if the EUTM applicant indicates that the PDO/PGI in question
has not yet been registered, the proceedings will be suspended until the outcome of
the registration procedure of the PDO/PGI.
Therefore, no objection will be raised under Article 7(1)(j) EUTMR when the
PDO/PGI was applied for after the filing date (or priority date, if applicable) of the
EUTM application.




For wines, where there is no relevant date information in the ‘E-Bacchus’ extract,
this means that the PDO/PGI in question was already in existence on
01/08/2009, the date on which the register was set up. For any PDOs/PGIs for
wines added subsequently, the ‘E-Bacchus’ extract includes a reference to the
publication in the Official Journal, which gives the relevant information.
For spirit drinks, the initial publication of Annex III of Regulation (EC)
No 110/2008 contained all PGIs for spirit drinks that existed on 20/02/2008, the
date of entry into force of that regulation. For any PGIs for spirit drinks added
subsequently, the corresponding amendment of the regulation contains the
relevant information.
Similarly, for aromatised wines, the initial publication of Annex II of Regulation
(ECC) No 1601/91 contained all PGIs for aromatised wines that existed on
17/06/1991, the date of entry into force of that regulation. For any PGIs for
aromatised wines added subsequently, the corresponding amendment of the
regulation contains the relevant information. However, with the reform brought by
Regulation (EU) No 251/2014, in force as of 27/03/2014, any future PGI should
be included in an electronic register established by the Commission (see
Article 21). This register is not in place yet.
Details of the date of application for the PDO/PGI for agricultural products and
foodstuffs are available in the ‘DOOR’ database.
2.10.3 Situations covered by the EU Regulations
Article 7(1)(j) EUTMR applies (provided that the other conditions also apply) in all of the
following situations:
1.
2.
3.
4.
5.
the EUTM application consists solely of a whole PDO/PGI (‘direct use’);
the EUTM application contains a whole PDO/PGI in addition to other word or
figurative elements (‘direct or indirect use’);
the EUTM application contains or consists of an imitation or evocation of a
PDO/PGI;
other misleading indications and practices;
the use of the EUTM application would exploit the reputation of PDOs/PGIs.
A number of limits to the scope of protection however are possible (see
paragraph 2.10.3.6 below) and special rules apply to trade marks in conflict with more
than one PGI/PDO (see paragraph 2.10.3.7 below).
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2.10.3.1 EUTM consists solely of a whole PDO/PGI (‘direct use’)
This situation covers the ‘direct use’ of a PDO/PGI as an EUTM, that is, the trade mark
consists solely of the name of the PDO/PGI.
Examples
PDO/PGI
European Union trade mark
MADEIRA
(PDO-PT-A0038)
MADEIRA
(Collective EUTM No 3 540 911)
MANZANILLA
(PDO-ES-A1482)
MANZANILLA
(Collective EUTM No 1 723 345)
DRESDNER CHRISTSTOLLEN
(DE/PGI/005/0704)
DRESDNER CHRISTSTOLLEN
(Collective EUTM No 262 949)
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
PROSCIUTTO DI PARMA
(Collective EUTM No 1 116 458)
If the mark consists solely of the PDO/PGI, the EUTM also falls under Article 7(1)(c)
EUTMR, since it is considered descriptive of the geographical origin of the goods in
question. This means that the examiner’s objection will simultaneously raise absolute
grounds for refusal under both Article 7(1)(c) and (j) EUTMR.
There is an exception to the application of Article 7(1)(c) EUTMR, pursuant to
Article 66(2) EUTMR, when the EUTM is a collective trade mark and the regulations
governing use thereof include the particulars foreseen in Article 67(2) EUTMR (for the
contrary situation, where the mark had been applied for as an individual mark, see
decision of 07/03/2006, R 1073/2005-1 – ‘TEQUILA’, para. 15).
While restricting the relevant goods (to comply with the specifications of the
PDO/PGI) is usually a means of waiving the objection under Article 7(1)(j) EUTMR (see
paragraph 2.10.4 below), this restriction is irrelevant for Article 7(1)(c) EUTMR.
For example, an application for the word mark ‘Bergerac’ for wines will simultaneously
be objected to under both Article 7(1)(c) and (j) EUTMR: it consists solely of the PDO
‘Bergerac’ and is therefore descriptive. If the goods are subsequently limited to wines
complying with the specifications of the PDO ‘Bergerac’, the objection under
Article 7(1)(j) EUTMR will be waived but the trade mark is still descriptive and can be
objected to under Article 7(1)(c) EUTMR, unless it is applied for as a collective trade
mark that complies with Article 67(2) EUTMR.
2.10.3.2 EUTM contains a whole PDO/PGI in addition to other word or figurative
elements (‘direct or indirect use’)
This situation also covers the ‘direct use’ of a PDO/PGI in an EUTM through
reproduction of the name of the PDO/PGI together with other elements.
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The following EUTMs are considered to fall under Article 7(1)(j) EUTMR since they
contain the whole denomination of a PDO/PGI.
PDO/PGI
European Union trade mark
BEAUJOLAIS
BEAUX JOURS BEAUJOLAIS
(PDO-FR-A0934)
(EUTM No 1 503 259)
CHAMPAGNE
CHAMPAGNE VEUVE DEVANLAY
(PDO-FR-A1359)
(EUTM No 11 593 381)
BEAUJOLAIS
(PDO-FR-A0934)
(EUTM No 1 561 646)
PROSCIUTTO DI PARMA
CONSORZIO DEL PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
(EUTM No 6 380 141)
DRESDNER CHRISTSTOLLEN
(DE/PGI/005/0704)
(EUTM No 5 966 668)
PARMIGIANO REGGIANO
(IT/PDO/0117/0016)
(EUTM No 6 380 141)
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PDO/PGI
European Union trade mark
WELSH BEEF
(UK/PGI/0005/0057)
(EUTM No 10 513 729)
WELSH LAMB
(UK/PGI/0005/0081)
(EUTM No 11 927 472)
Under Article 7(1)(j) EUTMR, it is irrelevant whether or not the other word or figurative
elements may give the trade mark distinctive character. The sign can be acceptable as
a whole under Article 7(1)(b) and (c) EUTMR and can still be objected to (as in the
cases above) under Article 7(1)(j) EUTMR.
There is ‘indirect use’ of a PDO/PGI, for example, when the PDO/PGI appears in a
complex trade mark (such as the representation of a label) in smaller characters as
information about the origin or type of the product or as part of the producer’s address.
In such cases the trade mark can be objected to irrespective of the position or the size
of the PDO/PGI within the trade mark as a whole, provided that it is visible.
PDO/PGI
European Union trade mark
OPORTO
(PDO-PT-A1540)
EUTMs No 11 907 334 and No 2 281 970)
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QUESO MANCHEGO
(ES/PDO/0117/0087)
(EUTM No 5 582 267)
There must be a logical separation of the PDO/PGI from the rest of the term for it to be
identifiable and objectionable. A trade mark will not be objectionable when it contains
the PDO/PGI as part of a word element which does not trigger in the mind of the
consumer that of the product whose designation is protected. This is normally the case
when the term has its own meaning.
Examples where an objection should not be raised: TORONTO,
EXCAVADORA,
IMPORT.
Examples where an objection was raised: R 2462/2013-2 – ‘TOROLOCO’ and
R 1900/2013-5 – PARMATUTTO.
2.10.3.3 EUTM contains or consists of an imitation or evocation of a PDO/PGI
Neither the EUTMR nor the EU Regulations define the meaning of ‘imitation’ or
‘evocation’. To a large extent, they are closely related concepts.
According to the Court, ‘evocation’ covers ‘a situation where the term used to designate
a product incorporates part of a protected designation, so that when the consumer is
confronted with the name of the product, the image triggered in his mind is that of
the product whose designation is protected’ (judgments of 04/03/1999, C-87/97,
‘Cambozola’, para. 25; 26/02/2008, C-132/05, para. 44).
According to the Advocate General (opinion of 17/12/1998, C-87/97, ‘Cambozola’,
para. 33), ‘the term “evocation” is objective, so that it is not necessary to show that the
owner of the mark intended to evoke the protected name’.
In this respect, and for the purposes of Article 7(1)(j) EUTMR, the Office will assess in
an equally objective way the situations described below, under paragraphs (a) to (d),
regardless of the EUTM applicant’s actual intention.
Furthermore, the Office considers the terms ‘imitation’ and ‘evocation’ as two
corollaries of essentially the same concept. The mark ‘imitates’ (mimics, reproduces
elements of, etc.), with the result that the product designated by the PDO/PGI is
‘evoked’ (called to mind).
In the light of the above, the Office finds that there is evocation or imitation of a PDO
where:
(a)
the EUTM incorporates the geographically significant part (in the sense that it is
not the generic element) of the PDO/PGI;
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(b)
(c)
(d)
a)
the EUTM contains an equivalent adjective/noun that indicates the same
geographical origin;
the PDO/PGI is translated;
the EUTM includes a ‘de-localiser’ expression in addition to the PDO/PGI or its
evocation.
The EUTM incorporates the geographically significant part of the PDO/PGI
As indicated above, according to the Court (judgment of 04/03/1999, C-87/97,
‘Cambozola’, and judgment of 26/02/2008, C-132/05, cited above), the EUTM must
trigger in the consumer’s mind the image of the product whose designation is
protected.
The Court has also stated that ‘it is possible … for a protected designation to be
evoked where there is no likelihood of confusion between the products concerned’
(judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 26).
Importantly, evocation is not assessed in the same way as likelihood of confusion
(see opinion of the Advocate General of 17/12/1998, C-87/97, ‘Cambozola’, para. 37).
A link must be made with the product whose designation is protected. Therefore,
whether or not there is evocation will not be analysed according to the principles laid
down by the CJEU in judgment of 11/11/1997, C-251/95, ‘Sabèl’.
Evocation is understood as encompassing not only when the EUTM incorporates
(one of) the geographically significant word(s) (as opposed to generic) element(s)
of a PDO/PGI, but also when the EUTM reproduces other parts of that PDO/PGI,
such as a characteristic root or ending.
PDO/PGI
Trade Mark
Explanation
The term ‘chianti’ evokes the PDO
‘Chianti Classico’ protected for oils
and fats.
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(R 1474/2011-2, ‘AZIENDA
OLEARIA CHIANTI’, paras 14-15)
(EUTM 9 567 851)
NÜRNBERGER
BRATWÜRSTE/NÜRNBERGER
ROSTBRATWÜRSTE
‘due to the phonetic equivalence,
NUERNBERGA is understood in
the sense of the geographical
indication Nürnberger’
NUERNBERGA
(EUTM No 9 691 577)
(R 1331/2011-4, ‘NUERNBERGA’,
para. 12)
(DE/PGI/0005/0184)
b)
Equivalent adjectives/nouns
The use of an equivalent adjective/noun to indicate the same origin constitutes an
evocation of a PDO/PGI.
PDO/PGI
European Union trade
mark
(invented examples)
Explanation
IBIZA
IBICENCO
Noun in the PDO → Adjective in the EUTM
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(PGI-ES-A0110)
AÇORES
AÇORIANO
Noun in the PDO → Adjective in the EUTM
BORDELAIS
Noun in the PDO → Adjective in the EUTM
(PGI-PT-A1447)
BORDEAUX
(PDO-FR-A0821)
JAGNIĘCINA
PODHALAŃSKA
JAGNIĘCINA Z PODHALA Adjective in the PGI → Noun in the EUTM
(PL/PGI/0005/00837)
MEL DO ALENTEJO
MEL ALENTEJANA
Noun in the PDO → Adjective in the EUTM
WILD SALMON
FROM SCOTLAND
Adjective in the PGI → Noun in the EUTM
(PT/PDO/0017/0252)
SCOTTISH WILD SALMON
(GB/PGI/0005/00863)
c)
Translated PDOs/PGIs
Likewise, there is evocation or imitation of the PDO/PGI when the EUTM contains or
consists of a translation of the whole or part of a PDO/PGI in any of the EU languages.
PDO/PGI
COGNAC
European Union trade
mark
KONJAKKI
(invented example)
Explanation
An EUTM that contains the term ‘Konjakki’
will be considered to evoke ‘Cognac’ in
Finnish.
‘Borgoña’ is the Spanish translation of the
French PDO ‘Bourgogne’
BOURGOGNE
EUTM 2417269
PÂTES D'ALSACE
(FR/PGI/0005/0324)
ALSATIAN PASTA
(invented)
An EUTM that contains the expression
‘Alsatian Pasta’ will be considered to evoke
the PGI ‘Pâtes d'Alsace’
Trade marks consisting of these terms must be refused under both Article 7(1)(c) and(j)
EUTMR rather than solely under Article 7(1)(c) EUTMR.
d)
Expressions used as ‘de-localisers’
According to Article 103(2)(b) of Regulation (EU) No 1308/2013, Article 20(2)(b) of
Regulation (EU) No 251/2014, Article 16(b) of Regulation (EC) No 110/2008 and
Article 13(1)(b) of Regulation (EU) No 1151/2012, PDOs/PGIs are protected ‘even if
the true origin of the product … is indicated or if the protected name is … accompanied
by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” … or
similar’.
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Therefore, the fact that the PDO/PGI reproduced or evoked in the EUTM is
accompanied by these expressions does not cancel out the application of Article 7(1)(j)
EUTMR.
In other words, even if the public is thereby informed about the actual origin of the
product, an objection will still be raised under Article 7(1)(j) EUTMR.
Notwithstanding this, the trade mark will be misleading under Article 7(1)(g) EUTMR
since there is a contradiction between the goods (restricted to the specific PDO/PGI)
and the message conveyed by the mark (that the goods are not ‘genuine’ PDO/PGI
products), which will thus necessarily lead to a further objection under that article.
PDO/PGI
European Union trade
mark
(invented examples)
RIOJA
RIOJA STYLE RED WINE
(PDO-ES-A0117)
FETA
(EL/PDO/0017/0427)
GREEK STYLE PLAIN
FETA
ARABIAN FETA
Explanation
An EUTM that contains an expression such
as ‘Rioja Style Red Wine’ will be
considered to evoke the PDO ‘Rioja’ even if
it conveys the idea that the product in
question is not a ‘genuine’ PDO Rioja wine.
An EUTM that contains expressions such
as ‘Greek Style Plain Feta’ or ‘Arabian
Feta’, will be considered to evoke the PDO
‘Feta’, even if it conveys the idea that the
product in question is not a ‘genuine PDO
Feta’ cheese
Where the applicant has its legal seat is irrelevant for assessing Article 7(1)(j) EUTMR.
Article 103(1) of Regulation (EU) No 1308/2013, Article 20(1) of Regulation (EU)
No 251/2014 and Article 12(1) of Regulation (EU) No 1151/2012 set out that protected
designations of origin and protected geographical indications may be used by any
operator marketing a product that conforms to the corresponding specification. Hence,
provided that the goods comply with the specification of the PDO/PGI in question
(which is guaranteed by restricting the goods appropriately), the location of the
applicant’s legal seat as indicated in the EUTM application is irrelevant. For example, a
company with legal domicile in Poland can own a vineyard located in Spain that
produces wine complying with the product specification of the PDO ‘Ribera del Duero’.
Similarly, a company with its legal domicile in Lithuania can own a factory located in
Spain that elaborates products complying with the PGI ‘Chorizo de Cantimpalos’.
2.10.3.4 Other misleading indications and practices
Article 103(2)(c) and (d) of Regulation (EU) No 1308/2013, Article 20(2)(c) and (d) of
Regulation (EU) No 251/2014, Article 16(c) and (d) of Regulation (EC) No 110/2008
and Article 13(1)(c) and (d) of Regulation (EU) No 1151/2012 protect the PDO/PGI
against a number of false or misleading indications about the origin, nature or essential
qualities of the product.
Although it very much depends on the particularities of each case, each of which must
therefore be assessed individually, an EUTM may be considered misleading when, for
example, it contains figurative elements that are typically associated with the
geographical area in question (such as well-known historical monuments) or when it
reproduces a particular shape of the product.
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The above must be interpreted in a restrictive way: it refers solely to EUTMs that
depict a well-known and singular image that is generally taken as a symbol of the
particular place of origin of the products covered by the PDO/PGI or a singular shape
of the product that is described in the specifications of the PDO/PGI.
PDO/PGI
PORTO
(PDO-PT-A1540)
MOULES DE BOUCHOT DE
LA BAIE DU MONT-SAINTMICHEL
(FR/PDO/0005/0547)
QUESO TETILLA
(ES/PDO/0017/0088)
European Union trade
mark
(invented examples)
Explanation
EUTM depicting
the ‘Dom Luís I Bridge’
in the city of Porto
A picture of the Dom Luís I Bridge and its
riverside is a well-known emblem of the city
of Porto. Use of this image for wines other
than those covered by the PDO ‘Porto’
would fall under Article 103(2)(c) and (d) of
Regulation (EU) No 1308/2013.
A picture of the Mont-Saint-Michel Abbey is
a well-known emblem of the city and island
of Mont Saint Michel in Normandy. Use of
An EUTM which contains an
this image for seafood other than that
image of the Mont-Saintcovered by the PDO ‘Moules de Bouchot
Michel Abbey
de la Baie du Mont-Saint-Michel’ would fall
under Article 13(1)(c) and (d) of Regulation
(EU) No 1151/2012
An EUTM which depicts a
cheese conical in shape
The singular shape of the product is
described in the specifications of the PDO
‘Queso Tetilla’
Given the inherent difficulty in identifying evocative figurative elements, particularly in
less obvious cases, the Office will in such cases rely principally on observations by
third parties.
2.10.3.5 The exploitation of the reputation of PDOs/PGIs
According to Article 103(2)(a) of Regulation (EU) No 1308/2013, Article 20(2)(a) of
Regulation (EU) No 251/2014, Article 16(a) of Regulation (EC) No 110/2008 and
Article 13(1)(a) of Regulation (EU) No 1151/2012, registered names are protected
against use that exploits the reputation of the protected name. This protection extends
even to different products (see by analogy judgment of 12/06/2007, joined cases
T-53/04 to T-56/04, T-58/04 and T-59/04, ‘Budweiser’, para. 175).
However, as regards wines the scope of such protection must be read in line with the
mandate contained in Article 102 of Regulation (EU) No 1308/2013, which limits the
refusal of trade marks to products listed in its Annex VII, Part II. As regards aromatised
wines, Article 19 of Regulation (EU) No 251/2014 limits the refusal to trade marks
relating to an aromatised wine product. For agricultural products and foodstuffs,
Article 14 of Regulation (EU) No 1151/2012 limits the refusal of trade marks to products
‘of the same type’.
For spirit drinks, Regulation (EC) No 110/2008 does not contain any specification but
the Offices follows a systematic approach and considers that in the context of
examining absolute grounds for refusal, the PDO/PGI’s protection under all EU
Regulations is limited to identical or comparable products. Other products and
services are not objected to.
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However, the extended scope of protection of a PDO/PGI with reputation can be
invoked in the context of Article 8(4) EUTMR (see the Guidelines, Part C, Opposition,
Section 4, Rights under Article 8(4) EUTMR).
2.10.3.6 Limits to the scope of protection
If a PDO/PGI contains or evokes the name of a product that is considered generic,
protection does not extend to the generic element (see Article 13(1) of Regulation (EU)
No 1151/2012, in fine and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’, paras 58
and 60).
In the PGI ‘Ron de Málaga’, it is a well-known fact that the term ‘ron’ (the Spanish word
for rum) is generic and therefore does not deserve protection. Accordingly, no objection
will be raised to the mere fact that an EUTM contains a generic term that is part of a
PDO/PGI.
In the PGIs ‘Maçã de Alcobaça’ and ‘Jambon d'Ardenne’, it is a well-known fact that the
terms ‘maçã’ (the Portuguese word for apple) and ‘jambon’ (the French word for ham)
are generic and therefore they do not deserve protection. Accordingly, no objection will
be raised to the mere fact that an EUTM contains those generic terms that are part of a
PDO/PGI.
In particular, it must also be mentioned that the terms ‘camembert’ and ‘brie’ are
generic (judgment of 26/02/2008, C-132/05, para. 36). See the PDOs Camembert de
Normandie (FR/PDO/0017/0112), Brie de Meaux (FR/PDO/0017/0110) and Brie de
Melun (FR/PDO/0017/0111).
Other examples are ‘cheddar’ or ‘gouda’ (see Regulation (EC) No 1107/96, footnotes to
the PDOs ‘West Country Farmhouse Cheddar’ and ‘Noord-Hollandse Gouda’).
Therefore, no objection was raised in the following case:
PDO/PGI
European Union trade mark
(none, because ‘camembert’ is not a geographical
indication, but a generic term)
(EUTM No 7 389 158)
Where the generic nature of an element in a PDO/PGI can be determined by standard
dictionary definitions, the perspective of the public in the country of origin of the
PDO/PGI is determinative. For instance, in the examples cited above, it suffices that
the term ‘ron’ is generic for Spanish consumers and ‘maçã’ and ‘jambon’ for
Portuguese and French consumers, for it to be concluded that it is generic, regardless
of whether or not it can be understood by other parts of the public in the European
Union.
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By contrast, where no definition can be found in a standard, well-known dictionary, the
generic nature of the term in question should be assessed following the criteria laid
down by the Court (judgment of 26/02/2008, C-132/05 and judgment of 12/09/2007,
T-291/03, ‘Grana Biraghi’), such as relevant national and EU legislation, how the term
is perceived by the public, and circumstances relating to the marketing of the product in
question.
In addition, if a PDO/PGI contains or evokes a term which is commonly used in trade
(and it is not protected as a traditional term for wine or as a traditional
specialityguaranteed) to designate the goods concerned, objections should not
automatically be raised against trade marks containing/evoking that term (e.g. ‘Torre’,
see judgment of 18/12/2008, T-287/06 ‘Torre Albéniz’, para. 58 and judgment of
11/07/2006, T-247/03 ‘Torre Muga’, para. 57). In particular, the Office will assess
whether, by including the terms in the sign, the image triggered in the mind of the
consumer is that of the product whose designation is protected.
PDO/PGI
European Union trade
mark
CASTELLÓ (PGI) for wines
CASTELL DE LA BLEDA for wines
In the wine sector, the term ‘castello’ (without accent, castle in Italian) is
frequently used.
Comment
It is considered that the term ‘CASTELL’ does not constitute, strictly speaking,
an evocation of the PGI in question. While it is admitted that the difference is
only in one letter, terms such as ‘castillo/castello’, ‘torre’, etc. are commonly
used in the presentation of wines. In view of this, it is doubtful that the relevant
consumers would associate the EUTM in question with the wines protected
under the PGI. It is rather more likely that they will first make an immediate
association with a common term in the marketing of wines.
A PGI/PDO that coincides with surnames or family names, when used in combination
with other elements, is unlikely remind the relevant consumer of the product protected
under the relevant PDO/PGI. For instance, the term ‘Leon’ is included in the PDO
‘Tierra de León’ and the PGI ‘Castilla y León’, both for wines. However, in combination
with a first name, it is more likely to be perceived as a family name rather than an
indication of geographical origin (R 0227/2011-4 – MICHEL LEON but see on the
contrary R 1944/2014-2 FRAY LEON, which was rejected).
The term ‘Lorenzo’ is included in the PDO ‘Castel San Lorenzo’ for wines. However, in
combination with other elements, it is more likely to be perceived as a first name rather
than an indication of geographical origin. See EUTM 14 095 228 Organic Casa
Lorenzo (figurative).
2.10.3.7 Trade marks in conflict with two or more PDOs/PGIs
In some cases an EUTM application may constitute direct/indirect use or evocation of
more than one PDO/PGI at the same time. This is likely to happen when the EUTM
application contains an element (not being a generic one) that appears in more than
one PDO/PGI.
In these cases, provided that the EUTM application covers the relevant goods, an
objection should be raised for all the PDOs/PGIs concerned to the extent that the
objection cannot be overcome by limiting the goods.
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A number of scenarios can be identified:

Use/evocation of two (or more) different PGIs/PDOs for identical products: the
objection cannot be overcome by limiting the goods to those that comply with
either one of or all of the PDOs/PGIs as this would necessarily trigger another
objection under Article 7(1)(j) EUTMR, since such a limitation would inevitably
and confusingly identify the goods with a geographical origin other than that of
the PDO/PGI in question.
PDO/PGI
European Union trade
mark
RIOJA (PDO-ES-A0117)
SANTIAGO (Chilean PGI)
For wines
RIOJA SANTIAGO for wines
The trade mark applied for consists of the terms ‘RIOJA’ and ‘SANTIAGO’,
each of which coincides with a protected designation of origin for wines, the
former (‘RIOJA’) being protected by the European Union and the latter
(‘SANTIAGO’), a geographical indication for a wine originating from Chile,
protected under a bilateral agreement between the European Union and the
Republic of Chile (…)
Explanation
It is not possible to accept any limitation that includes wine originating from the
territory of one of the two designations of origin since such a limitation
automatically excludes wines originating from the other designation of origin,
which inevitably means that the trade mark applied for will lead to confusion.
By the same token, a hypothetical limitation of the list of goods to wine from
the geographical area covered by either of the designations of origin, e.g.
‘wines from the Rioja designation of origin and wines from the Santiago
designation of origin’, in Class 33, would be covered by the prohibition of
Article 7(1)(j) EUTMR insofar as the trade mark would inevitably — and
confusingly — identify wines with a geographical origin other than that of the
respective designations of origin included under the trade mark. Preventing
such an eventuality is the principal purpose of that article.
(R 0053/2010-2, ‘RIOJA SANTIAGO’)
PDO/PGI
European Union trade
mark
Explanation
PAUILLAC (PDO-FR-A0713)
BORDEAUX (PDO-FR-A0821))
For wines
PAUILLAC BORDEAUX for wines
A limitation is not possible, as a limitation of one or another will be deceptive.
The quality and characteristics of the PDO are not the same and the
consumers would be misled as to the geographical origin of the product.
The above, notwithstanding that Pauillac is geographically located within the
Bordeaux region.

Use/evocation of two (or more) PGIs/PDOs sharing common term(s) for identical
products: the objection can be waived if a limitation for one of the PGIs/PDOs is
introduced.
PDO/PGI
European Union trade
mark
Comment
ACETO BALSAMICO DI MODENA (PGI)
ACETO BALSAMICO TRADIZIONALE DI MODENA (PDO)
Both for vinegar
MARIOLA ACETO BALSAMICO DI MODENA (invented) for vinegar
The sign reproduces in its integrity the PGI ‘aceto balsámico dI Modena’.
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A limitation should be introduced for vinegars complying with the
specifications of the PGI ACETO BALSAMICO DI MODENA. The public will
not be deceived as to the geographical origin of the products.
However, a limitation for ‘aceto balsamico tradizionale di Modena’ should not
be accepted as the sign expressly refers to the PGI and not to the PDO.
PGI
European Union trade
mark
Comment
ACETO BALSAMICO DI MODENA (PGI)
ACETO BALSAMICO TRADIZIONALE DI MODENA (PDO)
Both for vinegar
MARIOLA MODENA (invented) for vinegar
A limitation should be introduced either for the PGI ACETO BALSAMICO DI
MODENA or for the PDO ACETO BALSAMICO TRADIZIONALE DI MODENA
or for both.
The public will not be deceived as to the geographical origin of the products.
PDO/PGI
European Union trade
mark
Alpes-de-Haute-Provence (PGI)
Coteaux d'Aix-en-Provence (PDO)
Coteaux Varois en Provence (PDO)
Côtes de Provence (PDO)
Les Baux de Provence (PDO)
All for wines
CHATEAU LEBEL PONT EN PROVENCE for wines
A limitation should be introduced with respect to one or several of the
PGIs/PDOs
Comment
e.g. wines complying with the specifications of the PGI Alpes-de-HauteProvence; wines complying with the specifications of the PDO Coteaux d’Aixen-Provence; wines complying with the specifications of the PDO Côtes de
Provence.
This EUTM application is different from the EUTM application Pauillac
Bordeaux, where the EUTM application expressly refers to two PGIs/PDOs. In
the present case the sign only refers to the common term in all the
PGIs/PDOs, ‘PROVENCE’ so a fair use of any of the PGIs/PDOs including
‘PROVENCE’ is possible. This is without prejudice to the applicable legislation
on labelling.

Use/evocation of two (or more) PGIs/PDOs sharing common term(s) for different
products: an objection can be waived for those goods where an appropriate
limitation is introduced.
PDO/PGI
European Union trade
mark
Sobrasada de Mallorca (PGI) (type of processed meat product)
Ensaimada de Mallorca (PGI) (type of pastry)
MALLORCA SUN (invented) applied for in Class 29 meat, eggs and milk and
Class 30 bread, pastry.
A limitation can be introduced for both PGIs. The public will not be deceived as
to the geographical origin of the products.
Comment
Class 29: meat complying with the specifications of the PGI sobrasada de
Mallorca; eggs; milk.
Class 30: bread, pastry complying with the specifications of the PGI
ensaimada de Mallorca.
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
Use/evocation of two (or more) PGIs/PDOs sharing common term(s) for
comparable products: an objection can be waived if a limitation is properly
introduced and the deceptive goods deleted from the list.
PDO/PGI
HIERBAS DE MALLORCA (PGI) — for aniseed-flavoured spirit drinks
PALO DE MALLORCA (PGI) — for liqueur
European Union trade
mark
SUNNY MALLORCA HIERBAS (invented) for alcoholic beverages in Class 33
Comment
The application can be accepted if a limitation is introduced for ‘aniseedflavoured spirit drinks complying with the specification of the PGI “hierbas de
Mallorca”’ and the other spirits (similar goods) are deleted.
PDO/PGI
Champagne (PDO) for wine
Ratafia de Champagne (PGI) for liqueur
Cognac de Champagne (PGI) for wine spirit
Marc de Champagne (PGI) for grape marc spirit
European Union trade
mark
AXM CHAMPAGNE for alcoholic beverages in Class 33
Wine and spirits are not considered comparable. The application can be
accepted if a limitation is introduced for one or various PGIs/DPOs and the
deceptive goods are deleted
Comment
e.g. Class 33: wines complying with the specifications of the PDO
‘Champagne’; liqueur complying with the specifications of the PGI ‘Ratafia de
Champagne’; wines spirit complying with the specifications of the PGI ‘Cognac
the Champagne’
If the EUTM application fully includes a different PGI/PDO with the term
‘Champagne’ (e.g. AXM RATAFIA DE CHAMPAGNE), it can be accepted if
the goods are properly limited:
e.g. Class 33: liqueur complying with the specifications of the PGI Ratafia de
Champagne.
PDO/PGI
European Union trade
mark
Prosciutto di Modena (PDO)
Zampone di Modena (PGI)
Cotechino di Modena (PGI)
AXM MODENA (invented) for meat in Class 29
The application can be accepted if a limitation is introduced for one or various
PGIs/DPOs and the deceptive goods are deleted
Comment
e.g. ham complying with the specification of the PDO Prosciutto di Modena,
zampone complying with the specification of the PGI zampone di Modena and
cotechino complying with the specification of the PGI cotechino di Modena.
The rest of the meat products are deleted.
The limitation meat complying with the specifications of the PDO prosciutto di
Modena is not acceptable.
2.10.4 Relevant goods under EU Regulations
2.10.4.1 Comparable products
Objections based on Article 7(1)(j) EUTMR can be raised only for specific goods of the
EUTM application, namely those that are identical or ‘comparable’ to ones covered by
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the PDO/PGI. The Office does not raise objections against different goods or against
services.
Specifically for wines, the different terms used in Articles 102(1) and 103(2) of
Regulation (EU) No 1308/2013 (‘product falling under one of the categories listed in
Part II of Annex VII’ and ‘comparable products’ respectively) are interpreted by the
Office as synonyms referring to the same concept. For ease of reference, the
categories listed in Part II of Annex VII can be grouped in: (i) wine; (ii) sparkling wine;
(iii) grape must; (iv) wine vinegar.
For aromatised wines, Article 19(1) of Regulation (EU) No 251/2014 refers to products
relating to ‘an aromatised wine product’. According to Article 3(1) of the Regulation,
aromatised wine products are obtained from the wine sector as referred to in
Regulation (EU) No 1308/2013 that have been flavoured. They are classified into the
following categories: aromatised wines; aromatised wine-based drinks; and aromatised
wine-product cocktails.
For spirit drinks, Regulation (EC) No 110/2008 does not contain this specification.
For agricultural products and foodstuffs, the different terms used in Articles 13 and 14
of Regulation (EU) No 1151/2012 (‘comparable products’, and ‘products of the same
type’ respectively) are interpreted by the Office as synonyms referring to the same
concept.
The notion of comparable goods must be understood restrictively and it is
independent of the analysis of similarity between goods in trade mark law. Accordingly,
the criteria set out in judgment of 29/09/1998, C-39/97, ‘Canon’, should not necessarily
be adhered to, although some of them may be useful. For example, given that a
PDO/PGI serves to indicate the geographical origin and the particular qualities of a
product, criteria such as the nature of the product or its composition are more relevant
than, for instance, whether or not goods are complementary.
In particular, the CJEU (in judgment of 14/07/2011, joined cases C-4/10 and C-27/10,
‘BNI Cognac’, para. 54) has listed the following criteria for determining whether goods
are comparable:



whether or not they have common objective characteristics (such as method of
elaboration, physical appearance of the product or use of the same raw
materials);
whether or not they are consumed, from the point of view of the relevant public,
on largely identical occasions;
whether or not they are distributed through the same channels and subject to
similar marketing rules.
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Although it is not possible in these Guidelines to list all the possible scenarios, the
following are some examples of comparable products.
Products covered by the PDO/PGI
Comparable products
Wine
All types of wines (including sparkling wine); grape
must; wine vinegar; wine-based beverages (e.g.
sangría)
Aromatised wines
All types of wines; aromatised wines (e.g.
vermouth); aromatised wine-based drinks (e.g.
sangría); and aromatised wine-product cocktails
(e.g. sparkling wine cocktail).
Spirits
All types of spirits; spirit-based drinks
Specific meat and specific meat preparations
Any meat and any meat preparation
(R 659/2012-5, p.14-17)
Cheese
Milk and other milk products
Fresh fruit
Preserved, frozen, dried and cooked fruits (jellies,
jams, compotes are not ‘comparable products’, but
the fruit covered by the PDO/PGI can be a
commercially relevant ingredient, see below under
‘Products used as ingredients’)
Fresh vegetables
Preserved, frozen, dried and cooked vegetables
(jellies, jams are not ‘comparable products’, but the
vegetable covered by the PDO/PGI can be a
commercially relevant ingredient, see below under
‘Products used as ingredients’)
2.10.4.2 Restrictions of the list of goods
According to Article 103(1) of Regulation (EU) No 1308/2013 and Article 20(1) of
Regulation (EU) No 251/2014, protected designations of origin and protected
geographical indications may be used by any operator marketing a wine or aromatised
wine conforming to the corresponding specification.
According to Article 12(1) of Regulation (EU) No 1151/2012, ‘protected designations of
origin and protected geographical indications may be used by any operator marketing
an [agricultural or foodstuff] product conforming to the corresponding specification’.
Objections raised under Article 7(1)(j) EUTMR may be waived if the relevant goods are
restricted to comply with the specifications of the PDO/PGI in question.
.
Restriction of goods can be a complex task, which may depend to a large extent on a
case-by-case examination.

Products of the same type as those covered by the PDO/PGI must be restricted
in order to meet the specifications of the PDO/PGI. The proper wording is ‘[name
of the product] complying with the specifications of the [PDO ‘X’]/PGI ‘X’]’. No
other wording should be proposed or allowed. Restrictions such as ‘[name of the
product] with the [PDO ‘X’]/PGI ‘X’]’ or ‘[name of the product] originating in [name
of a place]’ are not acceptable.
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PDO/PGI in the European Union trade mark
Acceptable list of goods
Slovácká
Wine complying with the specifications
of the PDO ‘Slovácká’
(PDO-CZ-A0890)
WELSH BEEF
Beef meat complying with the specifications
of the PGI ‘Welsh Beef’
(UK/PGI/0005/0057)
The products covered by Regulation (EU) No 1151/2012 mostly refer to
foodstuffs and beverages in Classes 29, 30, 31 and 32. However, there are a
number of exceptions. For example:
o
o
o

Class 3 essential oils (e.g. Bergamotto di Reggio Calabria)
Class 22 wool (e.g. Native Shetland Wool)
Class 31 flowers and ornamental plants (e.g. Flemish laurier) or hay (e.g.
Foin de Crau).
The category of products that includes those covered by the PDO/PGI should
be restricted to designate wines and aromatised wines that comply with the
specifications of the PDO/PGI. The category of products is found in the Extract
from the E-Bacchus Register under “registered as”. For spirit drinks, the
restriction should designate the exact category of product (e.g. whisky, rum, fruit
spirit, in accordance with Annex III of Regulation (EC) No 110/2008) that
complies with the specifications of the PDO/PGI. For agricultural products and
foodstuffs, the category of products that includes those covered by the PDO/PGI
should be restricted to designate exactly the products covered by the PDO/PGI
and that comply with its specifications. The category of products that includes
those covered by the PDO/PGI in question can be consulted in the ‘DOOR’
database. The exact product covered can be found in the application document
attached to the publication in the Official Journal, also accessible through ‘DOOR’
PDO/PGI in the
European Union trade
mark
Original specification
(not acceptable)
TOKAJI
Wine complying with the The EUTM can be
specifications of the accepted only for wine
PDO ‘Tokaji’
covered by the PDO
Meat
‘Meat’ includes products
(e.g. pork) which cannot
Beef meat complying comply
with
the
with the specifications of specifications
of
a
the PGI ‘Welsh Beef’
particular PDO/PGI that
covers
the
specific
product beef meat
Fruits
The
category
fruits
includes products such
Apples complying with
as pearl or peaches
the specifications of the
which cannot meet the
PDO
‘Pomme
du
specifications of a PDO
Limousin’
that exclusively covers
apples
WELSH BEEF
(UK/PGI/0005/0057)
POMME DU LIMOUSIN
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Wines
(PDO-HU-A1254)
(FR/PDO/0005/0442)
Acceptable
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
Comparable products are restricted to those products, within the category of
comparable products, covered by the PDO/PGI.
PDO/PGI in the
European Union trade
mark
MOSLAVINA
(PDO-HR-A1653)
POMME DU
LIMOUSIN
Original specification
(not acceptable)
Acceptable
list of goods
Explanation
Alcoholic beverages
(except beers)
Wine complying with the
specifications of the
PDO
‘Moslavina’;
alcoholic
beverages
other than wines
The EUTM can be
accepted only for wine
covered by the PDO,
and
for
alcoholic
beverages other than
wines, and wine-based
beverages.
Preserved, frozen,
dried and cooked fruits
Preserved,
frozen,
dried
and
cooked
apples complying with
the specifications of the
PDO
‘Pomme
du
Limousin’
(FR/PDO/0005/0442)
Preserved,
frozen,
dried and cooked fruits
includes products made
of other fruits which
cannot
meet
the
specifications of a PDO
which
exclusively
covers apples. Also to
note that the limitation
should not be for
apples.
There may be cases where the objection cannot be overcome by a limitation, for
example when the goods applied for, although ‘comparable’, do not include the product
covered by the PDO/PGI (e.g. where the PGI covers whisky and the goods applied for
are rum or the PDO covers cheese and the goods applied for re milk).

Products used as ingredients: if the goods covered by the PDO/PGI can be
used as a commercially relevant ingredient (in the sense that it may determine
the choice of the main product) of any of the goods included in the EUTM
application, a restriction will be requested. This is because Article 13(1)(a) and
(b) of Regulation (EU) No 1151/2012 expressly extend the scope of protection of
a PDO/PGI registered for a given product ‘when those products are used as an
ingredient’.
PDO/PGI in the EUTM
Original specification
(which is not acceptable)
POMME DU LIMOUSIN
Jams and compotes
(FR/PDO/0005/0442)
PROSCIUTTO DI
PARMA
Acceptable
list of goods
Jams and compotes
of apples complying
The fruit is the main
with the
ingredient of jams and
specifications of the
compotes
PDO ‘Pomme du
Limousin’
Pizzas with ham
complying with the
specifications of the
PDO ‘Prosciutto di
Parma’
Pizzas
(IT/PDO/0117/0067)
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This topping is the main
ingredient of a pizza and
the one which determines
the consumer’s choice
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A restriction is not necessary if the goods covered by the PDO/PGI are used as a
secondary, not commercially relevant ingredient of the claimed goods.
PDO/PGI in the EUTM
Original specification
ACEITE DE LA
ALCARRIA
Pastry
Acceptable
list of goods
Explanation
Pastry
The goods do not need to
be restricted by the mere
fact that oil is used in their
preparation. Oil is a
secondary ingredient which
is
not
commercially
relevant
(ES/PDO/0005/0562)
2.10.5 PDOs/PGIs not protected under EU Regulations
2.10.5.1 PDOs/PGIs protected at national level in an EU Member State
The Court of Justice has stated (judgment of 08/09/2009, C-478/07, ‘Bud’) that the EU
system of protection for PDOs/PGIs for agricultural products and foodstuffs laid down
in Regulation (EC) No 510/2006 [then in effect] is ‘exhaustive in nature’.
The Office applies an analogous approach for PDOs/PGIs for wines, aromatised wines
and spirit drinks for the following reasons. The former protection at national level of
geographical indications for wines, aromatised wines and spirit drinks that now qualify
for a PDO/PGI under Regulation (EU) No 1308/2013, Regulation (EU) No 251/2014
and Regulation (EC) No 110/2008 respectively was discontinued once those
geographical indications were registered at EU level (see Article 107 of Regulation
(EU) No 1308/2013, Article 26 of Regulation (EU) No 251/2014, Articles 15(2) and
20(1) of Regulation (EC) No 110/2008 and Article 9 of Regulation (EU) No 1151/2012
read in conjunction with recital 24).
Moreover, reference must also be made to Council Regulation (EEC) No 2081/92 on
the protection of geographical indications and designations of origin for agricultural
products and foodstuffs. That regulation (which preceded and was repealed by
Regulation (EC) No 510/2006) set out in Article 17(1) that Member States had to
‘inform the Commission which of their legally protected names … they wish[ed] to
register’ pursuant to that regulation. Paragraph 3 added that Member States could
‘maintain national protection of the names communicated in accordance with
paragraph 1 until such time as a decision on registration has been taken’ (see in this
respect judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 18).
In other words, the EU system of protection comprising the above EU Regulations
overrides and replaces national protection of PDOs/PGIs for agricultural products and
foodstuffs, wines, aromatised wines and spirit drinks.
In light of the foregoing:

Geographical indications for wines, spirits and agricultural products and
foodstuffs that now qualify for a PDO/PGI under EU Regulations and in the past
enjoyed protection by means of national legislation do not fall within the scope of
Article 7(1)(j) EUTMR. Accordingly, they do not constitute as such, and for that
reason alone, a ground for refusal under Article 7(1)(j) EUTMR, unless they have
also been registered at EU level. Therefore, if, for example, a third party argues
that an EUTM contains or consists of a geographical indication for wines that was
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
registered in the past at national level in an EU Member State, the examiner will
check whether the geographical indication is also registered at EU level as a
PDO/PGI. If not, the third-party observations will be deemed not to raise serious
doubts as regards Article 7(1)(j) EUTMR.
For aromatised wines, pursuant to Article 26 of Regulation (EU) No 251/2014, a
transitory period applies. Member States have until 28/03/2017 to submit all
relevant information for the protection of national PGIs at EU level to the
Commission. After that date, existing national PGIs that have not been notified to
the Commission will lose protection. As a consequence, until 28/03/2017 both EU
and national PGIs fall within the scope of Article 7(1)(j) EUTMR.
However, in those areas where no uniform EU system of protection is in place,
PDOs/PGIs protected under national law fall within the scope of Article 7(1)(j) EUTMR.
This is the case, in particular, for PDOs/PGIs for non-agricultural products.
Currently, neither the Commission nor the Office keeps a database listing the
PDOs/PGIs protected under national law for non-agricultural products. Given the
inherent difficulty in identifying such PDOs/PGIs, the Office will in these cases rely
principally on observations by third parties.
2.10.5.2 PDOs/PGIs from third countries
The following situations refer to PDOs/PGIs from third countries that are not
simultaneously registered at EU level. In the case the third country PDO/PGI is
registered at EU level, paragraphs 2.10.3 and 2.10.4 of these Guidelines apply (e.g.
Café de Colombia, Ron de Guatemala).
a)
The geographical indication is protected only in the third country of origin under
its national legislation
Article 7(1)(j) EUTMR does not apply since the third-country geographical indication is
not recognised and protected expressis verbis under EU legislation. In this respect,
note that the provisions of the TRIPs Agreement are not such as to create rights upon
which individuals may rely directly before the courts by virtue of EU law (judgment of
14/12/2000, joined cases C-300/98 and C-392/98, para. 44).
Example: ‘Miel Blanc d’Oku’ or ‘Poivre de Penja’ from Cameroon.
For third-country PDOs/PGIs protected in a Member State by virtue of an international
agreement signed by that Member State (and not the EU), see paragraph 2.10.5.2 c)
below.
Nevertheless, when the EUTM application contains or consists of one such protected
geographical indication, it must also be assessed whether or not the EUTM may be
considered descriptive and/or deceptive under Article 7(1)(c) and (g) EUTMR in
accordance with the general rules set out in these Guidelines. For example, where a
third party observes that an EUTM application consists of the term ‘Murakami’
(invented example), which is a PGI for spirits in accordance with the national legislation
of country X, Article 7(1)(j) EUTMR will not apply for the reasons set out above, but it
must be examined whether or not the EUTM will be perceived as a descriptive and/or
deceptive sign by the relevant EU consumers.
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b)
The geographical indication is protected under an agreement to which the
European Union is a contracting party
The EU has signed a number of trade agreements with third countries that protect
geographical indications. These instruments typically include a list of the geographical
indications, as well as provisions on their conflicts with trade marks. The content and
degree of precision may nevertheless vary from one agreement to another.
Geographical indications from third countries are protected at EU level after the
relevant agreement has entered into force.
In this respect, it is settled case-law that a provision of an agreement entered into by
the EU with non-member countries must be regarded as being directly applicable
when, in view of the wording, purpose and nature of the agreement, it may be
concluded that the provision contains a clear, precise and unconditional obligation
that is not subject, in its implementation or effects, to the adoption of any
subsequent measure (judgment of 14/12/2000, joined cases C-300/98 and C-392/98,
para. 42).
The scope of protection given to these PGIs by third countries is defined through the
substantive provisions of the agreement concerned. While the oldest agreements
usually contained only general provisions, the ‘latest generation’ of free trade
agreements refer to the relationship between trade marks and PGIs in similar terms to
Articles 102 and 103 of Regulation (EU) No 1308/2013 (see, for example, Articles 210
and 211 of the ‘Trade Agreement between the European Union and its Member States,
of the one part, and Colombia and Peru, of the other part’, OJ L 354, 21/12/2012).
In the light of this, EUTMs that contain or consist of a third-country PDO/PGI that is
protected by an agreement to which the EU is a contracting party (and is not
simultaneously registered under the EU Regulations) are examined, on a case-by-case
basis, in accordance with the specific substantive provisions of the agreement in
question on the refusal of conflicting trade marks, taking into account the case-law
cited above. The mere fact that a PDO/PGI from a third country is protected by those
instruments does not automatically imply that an EUTM that contains or consists of
the PDO/PGI must be refused: this will depend on the content and scope of the
agreement’s relevant provisions.
As regards the relevant point in time for the protection of such PDOs/PGIs, a caseby-case approach is necessary. PDOs/PGIs included in the initial agreement are
normally protected as of the date when the agreement enters into force. However, the
list of protected PDOs/PGIs can subsequently be updated in the so-called ‘second
generation agreements’. In these cases, the relevant priority date varies from
agreement to agreement: in some cases the priority date can be the date of the thirdcountry request to update the list and not the date when the Commission accepts the
inclusion of the PDOs/PGIs.
The Office keeps a public database where information on third-country PDO/PGIs
protected in the EU under international agreements is included. It is accessible here:
https://oami.europa.eu/tunnelweb/secure/webdav/guest/document_library/contentPdfs/law_and_practice/Geographic
al_indications/geographical_indications.xls
It should be noted that the trade agreements signed by the EU with third countries
typically have annexed to them a list of the PDOs/PGIs registered at EU level that are
also to be protected in the third countries in question (judgment of 11/05/2010,
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T-237/08, ‘Cuvée Palomar’, paras 104-108 and decision of 19/06/2013, R 1546/2011-4
– ‘FONT DE LA FIGUERA’). However, the Office does not use those lists as a
source of information about EU PDOs/PGIs, it uses the database cited above. Firstly,
the lists of EU PDOs/PGIs to be protected abroad may vary from one agreement to
another, depending on the particularities of the negotiations. Secondly, the annexes to
the agreements are usually amended and updated through an ‘Exchange of Letters’.
Examples:
c)
PDO/PGI
Country of origin
Products
Aguardiente chileno
Chile
Spirit drinks
Brandy/Brandewyn
South Africa
Spirit drinks
Breede River Valley
South Africa
Wine
Abricot du Valais
Switzerland
Spirit drinks
The geographical indication is protected under an international agreement signed
only by Member States (i.e. the EU is not a party)
Article 7(1)(j) EUTMR applies to PDOs/PGIs protected by international agreements to
which a Member State is a party. However, by analogy to the Office’s interpretation of
Article 7(1)(j) EUTMR as far as national law is concerned, the Office considers that the
reference to ‘international agreements to which the … Member State concerned is
party’ should be interpreted as international agreements in those areas where no
uniform EU protection is in place, namely non-agricultural products (see paragraph
2.10.5.1 above).
In C-478/07, ‘BUD’, the Court discussed the exhaustive nature of EU law as regards
PGIs originating from Member States. In the Office’s interpretation, this also applies to
third-country PDOs/PGIs in the relevant product fields that enjoy protection in the
territory of a Member State through an international agreement concluded between that
Member State and a non-EU-country.
This interpretation also applies to international agreements signed exclusively by
Member States with third countries (in particular, the Lisbon Agreement for the
Protection of Appellations of Provenance and their International Registration). For the
sole purpose of the examination of absolute grounds for refusal, the EU is not a
contracting party to these agreements, and they do not impose any obligations on the
EU (see, by analogy, the preliminary ruling of 14/10/1980, C-812/79, Attorney General
v Juan C. Burgoa, para. 9). Therefore, Article 7(1)(j) EUTMR only applies to
PDOs/PGIs for non-agricultural products protected under such agreements.
In light of the foregoing, for the purposes of Article 7(1)(j) EUTMR, international
agreements concluded by Member States are not applicable except:


To the extent that they cover PDOs/PGIs for non-agricultural products. Currently,
neither the Commission nor the Office keeps a database listing the PDOs/PGIs
for non-agricultural products protected under international agreements concluded
by Member States.
International agreements concluded with third countries by a Member State
before its accession to the EU. This is because the obligations arising out of an
international agreement entered into by a Member State before its accession to
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the EU have to be respected. However, Member States are required to take all
appropriate steps to eliminate the incompatibilities between an agreement
concluded before a Member State’s accession and the Treaty (see Article 307,
Treaty Establishing the European Community, now Article 351 TFEU, as
interpreted by the Court in its judgment of 18/11/2003, C-216/01 ‘BUD’,
paras. 168-172).
International agreements concluded with a third country by a Member State after
its accession to the EU, but before the entry into force of the uniform EU system
of protection in the given product area.
Given the inherent difficulty in identifying such PDOs/PGIs, the Office will in these
cases rely principally on observations by third parties.
2.10.5.3 Relationship with other EUTMR provisions
When the mark can be objected to under Article 7(1)(j) EUTMR, further examination
may still be necessary under the remaining possible grounds for refusal, such as
Article 7(1)(k) or 7(1)(l) EUTMR.
In other words, an EUTM application may be in conflict with both, a PDO/PGI in the
wine sector and a protected traditional term for wines or with a PDO/PGI in the
agricultural and foodstuffs sector and a protected traditional speciality guaranteed.
2.11
PDO/PGI
TTW/TSG
EUTM application (invented)
Jamón de Serón
Jamón serrano
ABC Jamón serrano de Serón for
ham
Alicante
Fondillón
ABC Fondillón Alicante for wine
Article 7(1)(k) EUTMR
Regulation No 2015/2424 amending Regulation No 207/2009 on the Community trade
mark introduced Article 7(1)(k) as a specific ground for objecting to trade marks in
conflict with earlier traditional terms for wine.
Article 7(1)(k) EUTMR applies to EUTMs that are in conflict with traditional terms for
wine (TTWs), protected by either EU legislation or international agreements to which
the EU is party.
It is a ground for refusal of EUTMs, introduced for reasons of coherence, in order to
offer an equivalent degree of protection to traditional terms for wine as to designations
of origin and geographical indications for wines.
2.11.1 General remarks on EU Regulations
Protection of TTWs is provided for in Council Regulation No 1308/2013, and
Commission Regulation No 607/2009, which lays down certain detailed rules for the
implementation of the Council Regulation (implementing act).
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2.11.1.1 Definition of traditional terms for wine under EU Regulations
As regards the definition of TTWs, recital 104 of Regulation No 1308/2013 indicates
that ‘Certain terms are traditionally used in the Union to convey information to
consumers about the particularities and the quality of wines, complementing the
information conveyed by protected designations of origin and geographical indications.
In order to ensure the working of the internal market and fair competition and to avoid
consumers being misled, those traditional terms should be eligible for protection in the
Union’.
Similarly, recital 12 of Commission Regulation No 607/2009 states that ‘The use,
regulation and protection of certain terms (other than designations of origin and
geographical indications) to describe wine sector products is a long-established
practice in the Community. Such traditional terms evoke in the minds of consumers a
production or ageing method or a quality, colour or type of place or a particular event
linked to the history of the wine. So as to ensure fair competition and avoid misleading
consumers, a common framework should be laid down regarding the definition, the
recognition, protection and use of such traditional term’.
According to Article 112 of Regulation No 1308/2013, a traditional term is a term
traditionally used in a Member State to designate:

or

that the product has a protected designation of origin or a protected geographical
indication under EU or national law
the production or ageing method or the quality, colour, type of place, or a
particular event linked to the history of the product with a protected designation of
origin or a protected geographical indication
It follows that two different types of traditional terms for wines are distinguished:
The first is used in place of a PDO (e.g. ‘appellation d’origine controlee (AOC)’,
‘denominación de origen protegida (DO)’, ‘denominazione di origine controllata (DOC)’,
‘Landwein’) or a PGI (‘Vin de Pays’, ‘Vino de la Tierra’, ‘Indicazione Geografica Tipica’,
‘Vinho Regional’, ‘Landwein’) under a Member State law.
The second type is a description of product characteristics used for production or
ageing methods, quality, colour, type of place, or for a particular event linked to the
history of the product with a PDO or PGI (e.g. ‘château’, ‘grand cru’, ‘añejo’, ‘clásico’,
‘crianza’, ‘riserva’, ‘fino’, ‘Federweisser’).
That said, TTWs convey information to consumers about the particularities and the
quality of wines, in principle complementing the information conveyed by protected
designations of origin and geographical indications, for example, ‘Gran Reserva de
Fondillón’ for wine of overripe grapes of PDO Alicante, ‘Cru bourgeois’ for wine from
PDO Médoc.
According to Article 40 of Commission Regulation 607/2009, traditional terms are listed
and defined in the ‘E-Bacchus’ database, and must mention the following:
(a)
(b)
(c)
the language of protection;
the grapevine product category or categories concerned by the protection;
a reference to the national legislation of the Member State or third country in
which the traditional term is defined and regulated, or to the rules applicable to
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wine producers in the third country, including those originating from
representative trade organisations, in the absence of national legislation in those
third countries;
a summary of the definition or conditions of use;
the name of the country or countries of origin;
the date of inclusion in the electronic database ‘E-Bacchus’.
d)
(e)
(f)
2.11.1.2 Relevant provisions governing conflicts with trade marks
As regards the scope of protection, Article 113(2) of Regulation No 1308/2013 and
Article 40(2) of Commission Regulation No 607/2009 state that
Traditional terms shall be protected, only in the language and for the
categories of grape vine products claimed in the application, against:
(a)
(b)
(c)
any misuse of the protected term, including where it is accompanied
by an expression such as “style”, “type”, “method”, “as produced in”,
“imitation”, “flavour”, “like” or similar;
any other false or misleading indication as to the nature,
characteristics or essential qualities of the product, placed on the
inner or outer packaging, advertising material or documents relating
to it;
any other practice likely to mislead the consumer, in particular to give
the impression that the wine qualifies for the protected traditional
term.
A specific provision for the relationship of traditional terms for wines with trade marks (a
provision analogous to Article 102 of Regulation No 1308/2013 governing PGI/PDOs)
is found in Article 41 of Commission Regulation No 607/2009:
1. Where a traditional term is protected under this Regulation, the registration of a
trademark, which corresponds to one of the situations referred to in Article 40,
shall be refused if the application for registration of the trademark does not
concern wines qualified to use such a traditional term and is submitted after the
date of submission of the application for protection of the traditional term to the
Commission and the traditional term is subsequently protected.
Trademarks registered in breach of the first subparagraph shall be declared
invalid on application in accordance with the applicable procedures as specified
by Directive 2008/95/EC of the European Parliament and of the Council or
Council Regulation (EC) No 40/94.
2. A trademark, which corresponds to one of the situations referred to in Article 40
of this Regulation, and which has been applied for, registered or established by
use, if that possibility is provided for by the legislation concerned, in the territory
of the Community before 4 May 2002 or before the date of submission of the
application for protection of the traditional term to the Commission, may
continue to be used and renewed notwithstanding the protection of the
traditional term.
In such cases the use of the traditional term shall be permitted alongside the
relevant trademark.
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In light of the above provisions, the following cumulative conditions must be fulfilled in
order for Article 7(1)(k) EUTMR to apply:
1.
2.
The traditional term in question must be protected within the meaning of
Article 112 of Regulation No 1308/2013 (see paragraph 2.10.2 above).
Use of the EUTM must constitute one of the situations provided for in
Article 113(2) of Regulation (EU) No 1308/2013 (see paragraph 2.10.3 above).
2.11.2 Relevant TTWs under EU Regulations
Article 7(1)(k) EUTMR applies where a TTW (either from an EU Member State or from
a third country) has been registered under the procedure laid down by Regulations
No 1308/2013 and No 607/2009.
Relevant information about traditional terms for wines can be found in the ‘E-Bacchus’
database maintained by the Commission, which can be accessed using the internet at
http://ec.europa.eu/agriculture/markets/wine/e-bacchus/.
2.11.2.1 Relevant point in time
Article 7(1)(k) EUTMR applies only for TTWs that were applied for before the EUTM
application and are registered at the time of examining the EUTM application.
The relevant dates for establishing the priority of a trade mark and of a TTW are the
date of application of the EUTM (or the so-called Paris Convention priority, if claimed)
and the date of application for protection of a TTW to the Commission respectively.
[Where there is no relevant date information in the ‘E-Bacchus’ extract, this means that
the TTW in question was already in existence on 01/08/2009, the date on which the
register was set up. For any TTW added subsequently, the ‘E-Bacchus’ extract
includes a reference to the publication in the Official Journal, which gives the relevant
information.]
[By analogy with the current practice for PGI/PDOs, and in view of the fact that the vast
majority of applications for TTWs usually mature in a registration, an objection will be
raised when the TTW was applied before the filing date (or the priority date, if
applicable) of the EUTM application but had not yet been registered at the time of
examination of the EUTM application. However, if the EUTM applicant indicates that
the TTW in question has not yet been registered, the proceedings will be suspended
until the outcome of the registration procedure of the TTW.]
2.11.3 Situations covered by Article 113(2) of Regulation No 1308/2013
Traditional terms will be protected, only in the language and for the categories of
grape vine products claimed in the application, against:
1.
any misuse of the protected term, including where it is accompanied by an
expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’,
‘like’ or similar;
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2.
3.
any other false or misleading indication as to the nature, characteristics or
essential qualities of the product, placed on the inner or outer packaging,
advertising material or documents relating to it;
any other practice likely to mislead the consumer, in particular to give the
impression that the wine qualifies for the protected traditional term.
In view of the wording of Article 113(2) of Regulation No 1308/2013, the scope of
protection of protected TTWs seems narrower than that of PDO/PGIs. Still, the Office
considers that a systematic approach should be followed and analogies be drawn, to
the extent possible, between the protection of PDO/PGI and TTWs. In particular:
PDO/PGI — Article 103(2)
TTW — Article 113(2)
The EUTM consists solely of a whole PDO/PGI
(‘direct use’);
‘Misuse’ also covers direct use. The practice for the
assessment of ‘direct use’ of a PDO/PGI should
apply by analogy.
The EUTM contains a whole PDO/PGI in addition
to other word or figurative elements (‘direct or
indirect use’);
‘Misuse’ also covers indirect use. The practice for
the assessment of ‘indirect use’ of a PDO/PGI
should apply by analogy.
The EUTM contains or consists of an imitation or
evocation of a PDO/PGI, including
the EUTM incorporates the geographically
significant part (in the sense that it is not the
generic element) of the PDO/PGI;
the EUTM contains an equivalent
adjective/noun that indicates the same
geographical origin;
the PDO/PGI is translated;
the EUTM includes a ‘de-localiser’ expression in
addition to the PDO/PGI or its evocation.
Only misuse is covered by Article 113(2) with the
caveat that such misuse refers to a use in the
language claimed in the application
.
Other misleading indications and practices;
Any other false or misleading indication as to the
nature, characteristics or essential qualities of the
product, placed on the inner or outer packaging,
advertising material or documents relating to it;
The reputation of PDOs/PGIs.
Not covered.
2.11.4 Relevant goods
Article 113(2) of Regulation No 1308/2013 and Article 40 (2) of Commission Regulation
No 607/2009 refer to ‘categories of grape vine products claimed in the TTW
application’. It is the Office interpretation that, unlike the case of PGI/PDOs, objections
based on conflicts with TTWs cannot be raised for comparable goods. However,
objections should be raised against any relevant product referred to in Article 92(1) of
Regulation No 1308/2013 for the following reasons.
According to Article 92(1) of Regulation No 1308/2013 the rules on, inter alia,
traditional terms should apply to the products referred to in points 1, 3 to 6, 8, 9, 11, 15
and 16 of Part II of Annex VIII. Such products are wine, liqueur wine, sparkling wine,
quality sparkling wine, quality aromatic sparkling wine, semi-sparkling wine, aerated
semi-sparkling wine, partially fermented grape must, wine from raisined grapes, wine of
overripe grapes.
Since all these products are wine-based and in view of the fact that most of the EUTM
applications applied for are wines without specifying the category of wines, objections
should be raised against any relevant product referred to in Article 92(1) of Regulation
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No 1308/2013. For instance, in cases of an EUTM application containing TTW
Fondillon, applying for wine in Class 33, the objection should not only be raised against
wine of overripe grapes that is protected by the TTW, but also for wine as such.
2.11.4.1 Restrictions of the list of goods
Objections raised due to conflicts with PDO/PGIs may be waived if the relevant goods
are restricted to comply with the specifications of the PDO/PGI in question.
For TTWs, there are no such specifications but their registration in the ‘E-Bacchus’
database must, in accordance with Article 40 of Commission Regulation 607/2009,
include a ‘summary of definition/conditions of use’. Therefore objections should be
waived if the relevant goods are restricted to comply with the definition/conditions of
use of the TTW in question. The proper wording is ‘[name of the product] complying
with the definition/conditions of use of the [TTW ‘X’]’. No other wording should be
proposed or allowed. Restrictions such as ‘[name of the product] with the [TTW ‘X’]’ are
not acceptable.
2.11.5 International agreements
By analogy to PDO/PGIs where international agreements to which the EU is party can
serve as a basis for raising an objection against a trade mark application, TTWs that
may be protected under international agreements to which the EU is a party should be
taken into account in the assessment of conflicts of a TTW with an EUTM application.
2.11.6 Relationship with other EUTMR provisions
When the mark can be objected to under Article 7(1)(k) EUTMR, further examination
may still be necessary under the remaining possible grounds for refusal, such as
Article 7(1)(j) EUTMR.
In other words, an EUTM application may be in conflict with both, a PDO/PGI in the
wine sector and a TTW.
2.12
PDO/PGI
TTW
EUTM application (invented)
Alicante
Fondillón
ABC Fondillón Alicante
Article 7(1)(l) EUTMR
Regulation No 2015/2424 amending Regulation No 207/2009 on the Community trade
mark introduced Article 7(1)(l) EUTMR as a specific ground for objecting to trade marks
in conflict with traditional specialities guaranteed.
Article 7(1)(l) EUTMR applies to EUTMs that are in conflict with traditional specialities
guaranteed (TSGs) protected by either EU legislation or international agreements to
which the EU is party.
Just as in the case of TTWs, it is a ground for refusal of EUTMs, introduced for reasons
of coherence, in order to offer an equivalent degree of protection to traditional
specialities guaranteed to designations of origin and geographical indications.
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2.12.1 General remarks on EU Regulations
2.12.1.1 Definition of traditional specialities guaranteed under EU Regulations
Protection of TSGs is provided for in Title III of Regulation (EU) No 1151/2012.
As regards the definition of TSGs, Article 17 of Regulation (EU) No 1151/2012
indicates that ‘A scheme for traditional specialities guaranteed is established to
safeguard traditional methods of production and recipes by helping producers of
traditional product[s] in marketing and communicating the value-adding attributes of
their traditional recipes and products to consumers’.
According to Article 18(1) of the regulation ‘A name shall be eligible for registration as a
traditional speciality guaranteed where it describes a specific product or foodstuff that:
(a)
(b)
results from a mode of production, processing or composition corresponding to
traditional practice for that product or foodstuff; or
is produced from raw materials or ingredients that are those traditionally used’.
Hence, TSGs highlight the traditional characteristics of a product either in its production
process or composition, for instance, ‘Lambic, Gueuze-Lambic, Gueuze’ for Belgian
acid beer during production of which spontaneous fermentation occurs, ‘Jamón
Serrano’ for Spanish ham produced in accordance with a traditional method of salting,
drying/maturing and ageing.
Unlike PGI/PDOs, the TSG quality scheme does not certify that the protected food
product has a link to a specific geographical area, for instance, TSG ‘Mozzarella’ for
Italian fresh pulled-curd cheese and PDO ‘Mozzarella di Bufala Campana’ for
mozzarella cheese originating from a particular geographical area.
To qualify for a TSG a product must, according to Article 18(2) of the regulation, be of
specific character: ‘2. For a name to be registered as a traditional speciality
guaranteed, it shall:
(a)
(b)
have been traditionally used to refer to the specific product; or
identify the traditional character or specific character of the product’.
In this context, it is referred to in Article 3 of Regulation (EU) No 1151/2012, which
defines:
i)
ii)
‘specific character’ as ‘the characteristic production attributes which distinguish a
product clearly from other similar products of the same category’,
‘traditional’ as ‘proven usage on the domestic market for a period that allows
transmission between generations; this period is to be at least 30 years’.
According to Article 23 of Regulation (EU) No 1151/2012, ‘a name registered as a
traditional speciality guaranteed may be used by any operator marketing a product that
conforms to the corresponding specification’.
Article 24 of Regulation (EU) No 1151/2012establishes the scope of protection of
TSGs — ‘registered names shall be protected against any misuse, imitation or
evocation, or against any other practice liable to mislead the consumer’.
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2.12.1.2 Relationship with trade marks
In contrast with PGI/PDOs, Regulation (EU) No 1151/2012 does not include a specific
provision for the relationship of TSGs with trade marks (i.e. a provision analogous to
Article 13). Article 24(1) only prohibits the use of the TSG in a number of situations but
not the registration of a trade mark.
Article 7(1)(l) EUTMR however refers to ‘trade marks which are excluded from
registration pursuant to Union legislation’.
The Office considers that a systematic approach should be followed and draws an
analogy with Article 7(1)(j) EUTMR: the registration of an EUTM application should be
refused or the registration of an EUTM invalidated if there is conflict with a TSG.
2.12.2 Relevant goods under EU Regulations
Article 7(1)(l) EUTMR applies where a TSG has been registered under the procedure
laid down by Regulation (EU) No 1151/2012.
Relevant information about traditional specialities guaranteed can be found in the
‘DOOR’ database maintained by the Commission, which can be accessed online at
http://ec.europa.eu/agriculture/quality/door/list.html.
2.12.2.1 Relevant point in time
Article 7(1)(l) EUTMR applies only for TSGs that were applied for before the EUTM
application and are registered at the time of examining the EUTM application.
By analogy with the current practice for PGIs/PDOs, and in view of the fact that the
vast majority of applications for TSG usually mature in a registration, an objection will
be raised when the TSG was applied before the filing date (or the priority date, if
applicable) of the EUTM application but had not yet been registered at the time of
examining the EUTM application. However, if the EUTM applicant submits that the
TSG in question has not yet been registered, the proceedings will be suspended until
the outcome of the registration procedure of the TSG.
2.12.3 Situations covered by Article 24 of Regulation (EU) No 1151/2012
In view of the wording of Article 13 of Regulation (EU) No 1151/2012, the scope of
protection of protected TSGs seems narrower than that of PDO/PGIs. However, the
Office considers that a systematic approach should be followed and analogies drawn,
to the extent possible, between the protection of PDO/PGI and TSGs, in particular:
PGI/PDO — Article 13
TSG — Article 24
The EUTM consists solely of a whole PDO/PGI
(‘direct use’);
‘Imitation, evocation or misuse’ includes direct use.
The EUTM contains a whole PDO/PGI in addition to ‘Imitation, evocation or misuse’ includes direct or
other word or figurative elements (‘direct or indirect indirect use.
use’);
The EUTM contains or consists of an imitation or
The practice for the assessment of ‘imitation or
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evocation of a PDO/PGI, including
evocation’ of a PDO/PGI should apply by analogy

the EUTM incorporates the geographically
significant part (in the sense that it is not the
generic element) of the PDO/PGI;

the
EUTM
contains
an
equivalent
adjective/noun that indicates the same
geographical origin;

the PDO/PGI is translated;

the EUTM includes a ‘de-localiser’ expression in
addition to the PDO/PGI or its evocation.
Other misleading indications and practices;
The practice for the assessment of ‘misleading
indications and practice’ of a PDO/PGI should apply
by analogy
The reputation of PDOs/PGIs.
Not covered
2.12.4 Relevant goods
Pursuant to Articles 13 and 14 of Regulation (EU) No 1151/2012, objections based on
conflicts with PGI/PDO can be raised only for specific goods of the EUTM application,
namely those that are identical or ‘comparable’ to ones covered by the PDO/PGI.
Article 19 of Regulation (EU) No 1151/2012 requires that a TSG must comprise a
‘description of the product including its main physical, chemical, microbiological or
organoleptic characteristics, showing the product’s specific character’.
In light of the absence to any reference to ‘comparable’ goods in Article 24 of
Regulation (EU) No 1151/2012, objections should be raised only to products covered
by the TSG.
2.12.4.1 Restrictions of the list of goods
Objections raised due to conflicts with PDO/PGIs may be waived if the relevant goods
are restricted to comply with the specifications of the PDO/PGI in question.
For TSGs, there are no such specifications but they must, in accordance with Article 20
of Regulation (EU) No 1151/2012, comprise a product specification. Therefore
objections should be waived if the relevant goods are restricted to comply with the
product specification of the TSG. The proper wording is ‘[name of the product]
complying with the product specification of the [TSG ‘X’]’. No other wording should be
proposed or allowed. Restrictions such as ‘[name of the product] with the [TSG ‘X’]’ are
not acceptable.
The TSG product specifications are published in the Official Journal and are accessible
via the ‘DOOR’ database.
2.12.5 International agreements
By analogy to PDO/PGIs, where international agreements to which the EU is party can
serve as a basis for raising an objection against a trade mark application, TSGs that
may be protected under international agreements to which the EU is a party should be
taken into account in the assessment of conflict of a TSG with an EUTM application.
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Currently, the Office does not keep a record of TSGs protected under international
agreements. Moreover, the ‘DOOR’ database does not include them either. Given the
difficulty in identifying such TSGs, the Office will in these cases rely, in principle, on
observations by third parties.
2.12.6 Relationship with other EUTMR provisions
When the mark can be objected to under Article 7(1)(l) EUTMR, further examination
may still be necessary under the remaining possible grounds for refusal, such as
Article 7(1)(j) EUTMR.
In other words, an EUTM application may be in conflict with both — a PDO/PGI in the
agricultural and foodstuff sector and a protected traditional speciality guaranteed.
2.13
PDO/PGI
TSG
EUTM application (invented)
Jamón de Serón
Jamón serrano
ABC Jamón serrano de Serón
Article 7(1)(m) EUTMR
Regulation No 2015/2424 amending Regulation No 207/2009 on the Community trade
mark introduced Article 7(1)(m) as a specific ground for objecting to trade marks in
conflict with earlier plant variety denominations.
In particular, Article 7(1)(m) EUTMR provides for the refusal of EUTMs that consist of,
or reproduce in their essential elements, an earlier plant variety denomination
registered in accordance with Union legislation or national law or international
agreements to which the Union or the Member State concerned is a party, providing for
protection of plant variety rights, and which are in respect of plant varieties of the same
or closely related species.
2.13.1 Legislative framework
As regards Union legislation protecting plant variety rights, Council Regulation (EC)
No 2100/94 on Community plant variety rights (CPVRR) establishes a system of
Community plant variety rights (CPVR) as the sole and exclusive form of Community
industrial property rights for plant varieties.
Since 2005, the European Union has been party to the International Convention for the
Protection of New Varieties of Plants (UPOV Convention), which has become an
integral part of the Union’s legal order. Under Article 20(1) UPOV Convention, a variety
‘shall be designated by a denomination which will be its generic designation’.
Furthermore, each Contracting Party must ensure that no rights in the designation
registered as the denomination of the variety will hamper the free use of the
denomination in connection with the variety, even after the expiration of the breeder’s
right.
Therefore, both the CPVRR and the UPOV Convention impose the obligation to use
the variety denominations in order to commercialise protected varieties or varieties
whose protection has ended.
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Moreover, pursuant to Article 7(1)(m) EUTMR, plant variety denominations registered
following national law or international agreements to which Member States are a
party must also be taken into account.
2.13.2 Definition of plant variety denomination
Plant variety denominations describe cultivated varieties or subspecies of live plants
or agricultural seeds. A variety denomination must ensure clear and unambiguous
identification of the variety and fulfil several criteria (Article 63 CPVRR). The applicant
for a CPVR must indicate a suitable variety denomination, which will be used by
anyone who markets such variety in the territory of a member of the International Union
for the Protection of New Varieties of Plants (UPOV), even after termination of the
breeder’s right (Article 17 CPVRR).
Protection is granted to plant variety denominations in order, inter alia, to protect the
legitimate interest of consumers and producers in knowing the variety they are using
or purchasing, as well as possibly the breeder and origin of that variety. The obligation
to use the variety denominations contributes to the regulation of the market and to the
safety of transactions in the agricultural and food sector, thus preventing counterfeiting
and any potential misleading of the public.
2.13.3 Situations covered by Article 7(1)(m) EUTMR
Article 7(1)(m) EUTMR applies if the following requirements are met:
1
there is a registered plant variety denomination (at EU or at national level,
including in third countries that are party to UPOV);
the plant variety denomination was registered prior to the EUTM application;
the EUTM application consists of, or reproduces in its essential elements, the
earlier plant variety denomination;
the EUTM application includes plant varieties of the same species as, or of
species closely related to, those protected by the registered plant variety
denomination.
2
3
4
2.13.3.1 Registered plant variety denominations
The Community Plant Variety Office (CPVO), based in Angers (France), is the
European Union agency responsible for managing a system for the protection of plant
variety rights.
The CPVO maintains a register of protected plant varieties. The protected varieties and
the varieties whose CPVR has been terminated can be searched, based on their
variety denomination and/or other search criteria, through the CPVO Variety Finder 7,
available on the Office’s website. This reference tool can be consulted whenever the
type of goods and/or services covered by the EUTM application so dictate (see
paragraph 3.4 below).
7
http://www.cpvo.europa.eu/main/en/home/databases/cpvo-variety-finder.
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In particular, whenever the specification of an EUTM application refers to live plants,
agricultural seeds, fresh fruits, fresh vegetables or equivalent wording, the Office will
verify in the CPVO Variety Finder whether the term(s) making up the essential
elements of the trade mark coincide(s) with a registered variety denomination or with
the denomination of a variety for which protection has expired or been surrendered or
terminated.
The search should extend to variety denominations registered for the European Union,
Member States and third countries on the basis of Union legislation, national law or
international agreements to which the Union or the Member State concerned is a party.
A plant variety right is surrendered when, pursuant to Article 19(3) of Regulation (EC)
No 2100/94, before expiry of the term of the right, the holder surrenders it by sending a
written declaration to such effect to the CPVO, in which case the right lapses with effect
from the day following the day on which the declaration is received by the CPVO.
Pursuant to Article 19(1) of Regulation (EC) No 2100/94, plant variety rights expire at
the end of 25th calendar year, or 30th year, in the case of varieties of vine and tree
species, following the year of grant.
Plant variety rights are terminated ex tunc when the Office declares the Community
plant variety right null and void pursuant to Article 20 CPVRR and with effect in futurum
if the Office cancels the Community plant variety right pursuant to Article 21 CPVRR.
2.13.3.2 Relevant point in time
Article 7(1)(m) EUTMR applies only in respect of plant variety denominations that were
registered (or, as explained above, had expired or been surrendered or terminated) at
the time when the EUTM application was examined. The relevant dates are the date of
filing of the EUTM application (or the ‘Paris Convention priority’, if claimed) and the
date of registration of the plant variety denomination.
2.13.3.3 The EUTM application consists of, or reproduces in its essential elements, the
plant variety denomination
Pursuant to Article 7(1)(m) EUTMR, objections are to be raised only if the EUTM
consists of, or reproduces in its essential elements, the plant variety denomination.
The following situations may therefore arise:
a)
b)
The EUTM applied for consists of an earlier plant variety denomination, for
example the word mark ‘ANTONIO’ for fruits and vegetables. Since ‘ANTONIO’ is
an earlier plant variety denomination for peppers, the Office will object with
regard to peppers. For ‘closely related species’, see paragraph 3.4 below.
The EUTM contains an earlier plant variety denomination. Whether the
application is objectionable or not will require a more detailed assessment. In
particular, the Office will examine whether the plant variety denomination is one
of the essential elements of the EUTM application.
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Examples:
EU trade mark
ANTONIO MARIN
VEGETABLES
Goods
Comment
ANTONIO is a registered plant
variety denomination for peppers.
ANTONIO is an essential element
Fruits and vegetables of the trade mark.
The Office will object with regard
to peppers, including closely
related species.
ANTONIO is a registered plant
variety denomination for peppers.
ANTONIO is not considered to
Fruits and vegetables
be an essential element of the
trade mark. Therefore, the Office
will not object.
2.13.3.4 Plant varieties of the same or closely related species
A check is to be made whenever the specification of an EUTM application refers to live
plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent.
If the check shows that the word or figurative EUTM applied for consists of, or
reproduces in its essential elements, an earlier plant variety denomination registered
under Union law, national law or relevant international agreements, the examiner must
raise an objection under Article 7(1)(m) EUTMR in respect of the relevant product.
Taking as an example the scientific name of the product ‘oats’, Avena sativa, the term
Avena describes the genus and in principle includes the closely related species Avena
abyssinica, Avena byzantine, Avena fatua, Avena nuda, etc. Similarly, the scientific
name of the most common pepper is capsicum annuum. The term capsicum describes
the genus and in principle includes the closely related species Capsicum baccatum,
Capsicum chinense, Capsicum pubescens, etc.
RULE: The objection should refer to the genus of the scientific name of the plant
variety denomination, which in principle covers closely related species.
EXCEPTION: There are cases where some species within the same genus are not
closely related to the others, or where species from different genera are closely related.
Exceptions will be examined by the Office upon request from the EUTM applicant
and/or on the basis of third-party observations.
See also Annex of the CPVO Guidelines on Article 63 CPVRR on the meaning of
‘closely related species’.
Finally, when more than one plant variety denomination appear as an essential
element in a trade mark application, for example a plant variety denomination for
‘apples’ and another one for ‘strawberries’, the list of goods will have to be limited in
order to exclude the goods covered by each plant variety denomination, that is to say,
apples and strawberries. This also applies where the two plant variety denominations
are joined in the same term, for example MARINEGOLD, where both MARINE and
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GOLD are protected; the list of goods will have to be limited in order to exclude the
goods covered by each plant variety denomination.
Examples of objections and limitations:
European Union trade mark
EUTM application
No 13 473 665
Goods
Comment
Class 31
TROPICAL is protected at European level
(QZ code) in the CPVO database for
‘Solanum lycopersicum L.’ (tomato),
‘Chrisantemum L.’ (chrysanthemum) and
‘Tulipa L.’ (tulips).
Registered with the following limitation in
Class 31: ‘[t]he aforesaid goods not being
or containing chrysanthemums, tulips or
tomatoes, or materials for vegetative
multiplication or reproduction of
chrysanthemums, tulips or tomatoes’.
Wheat in Class 31
‘Africa’ is protected at European level (QZ
code) for ‘wheat’. The objection was
overcome through a limitation (‘not
including wheat seeds’).
EUTM application
No 13 714 803
‘Nike’ is protected at European level (QZ
code) for ‘Avena sativa’ and
‘chrysanthemum’. The objection was
overcome through a limitation.
EUTM application
Class 31
No 13 784 021
Nature’ is protected at European level (QZ
code), for ‘Diplotaxis tenuifolia’ (a kind of
rocket). However, due to the small size of
the term ‘nature’ and to the integration into
a longer phrase, the word ‘nature’ plays a
secondary role and will not be perceived
as a CPVO. The mark is accepted.
EUTM application No 14 487
896
Class 31
2.13.4 Relationship with other EUTMR provisions.
Where a plant variety denomination is used in the market but has not been registered
or published in the CPVO or at national level, Article 7(1)(c) and (d) EUTMR might be
applicable (see paragraphs 2.3 and 2.4).
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2.14
European Union collective marks
2.14.1 Character of collective marks
A European Union collective mark (EU collective mark) is a specific type of EUTM
which, pursuant to Article 66(1) EUTMR, ‘is described as such when the mark is
applied for and is capable of distinguishing the goods or services of the members of the
association which is the proprietor of the mark from those of other undertakings’.
A European Union collective mark is aimed at distinguishing the goods and services of
the members of the association that owns the mark from those of other companies that
do not belong to that association. Therefore, the European Union collective mark
qualifies the commercial origin of certain goods and services by informing the
consumer that the producer of the goods or the service provider belongs to a certain
association and that it has the right to use the mark.
An EU collective mark is typically used by companies, together with their own individual
marks, to indicate that they are members of a certain association. For example, Spain’s
Association of Shoe Manufacturers may want to apply for the collective trade mark
‘Asociación Española de Fabricantes de Calzado’, which, while belonging to the
association, is going to be used by all its members. A member of the association may
want to use the collective mark in addition to its own individual mark, for example,
‘Calzados Luis’.
Collective marks do not necessarily certify the quality of the goods, although this is
sometimes the case. For example, regulations governing use frequently contain
provisions to certify the quality of the goods and services of the members of the
association and this is acceptable (see decision of 10/05/2012, R 1007/2011-2,
para. 13).
It is up to the applicant to decide whether the trade mark fulfils the requirements of a
collective mark or of an individual mark. This means that, in principle, the same sign
could be applied for either as an individual EUTM or, if the conditions described in this
chapter are met, as a collective EUTM. Differences between individual and collective
marks do not depend on the signs per se, but rather on other characteristics such as
the ownership or the conditions of use of the mark.
For example, an association can file an application for the word mark ‘Tamaki’ either as
an individual mark or as a collective mark, depending on the use that is intended to be
made of the mark (only by the association itself or also by the members thereof). If it is
applied for as an EU collective mark, certain additional formalities must be met, such
as the submission of regulations of use, etc.
After filing, changes of the kind of mark (from collective to individual or vice versa) are
accepted only under certain circumstances (see the Guidelines, Part B, Examination,
Section 2, Examination of Formalities, paragraph 8.2.5).
The EUTMR provisions apply to EU collective marks, unless Articles 67-74 EUTMR
provide otherwise. EU collective marks are thus subject, on the one hand, to the
general EUTM regime and, on the other hand, to some exceptions and particularities.
It follows, firstly, that an EU collective mark is subject to broadly the same examination
procedure and conditions as individual marks. In general terms, the classification of
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goods and services, examination of formalities and of absolute grounds for refusal is
done according to the same procedure as that applied to individual trade marks.
For example, examiners will check the list of goods and services or the language
requirements in the same way as they do with individual trade marks. Likewise,
whether the EU collective mark falls under one of the grounds for refusal of Article 7
EUTMR will also be examined.
The regulations provided by the applicant governing the use of its EU collective mark
must cover its use for all the goods and services included in the list of the EU
collective mark application. For instance, the applicant may do so by reproducing the
list of goods and services in the regulations of use or by referring to the list of goods
and services of the EU collective mark application.
With respect to EU collective marks conflicting with PGIs/PDOs, traditional terms for
wine or traditional specialities guaranteed, the regulations governing the use of a EU
collective mark should accurately reflect any limitation introduced to overcome such
conflicts. For example, the regulations of use of the EU collective mark ‘XYZ
Designation of Origin’ for ‘wines’ should accurately reflect the fact that they refer to the
use of the trade mark for wines complying with the PDO ‘XYZ’.
Secondly, the examination of an EU collective mark will also consider the exceptions
and particularities of this kind of mark. These exceptions and particularities refer both
to the formal and substantive provisions. As regards formalities, the requirement of the
regulations governing use of the mark is, for example, a specific characteristic of an EU
collective mark. (For further details of the examination of formalities of EU collective
marks, including the regulations of use of the mark, see the Guidelines, Part B,
Examination, Section 2, Examination of Formalities, paragraph 8.2.)
The substantive exceptions and particularities which apply to an EU collective mark are
described below.
2.14.2 Ownership
Ownership of EU collective marks is limited to (i) associations of manufacturers,
producers, suppliers of services, or traders which, under the terms of the law governing
them, have the capacity in their own name to have rights and obligations of all kinds, to
make contracts or accomplish other legal acts and to sue and be sued; and (ii) legal
persons governed by public law.
The first type of owner typically comprises private associations with a common purpose
or interest. They must have their own legal personality and capacity to act. Therefore,
private companies such as sociedades anónimas, Gesellschaften mit beschränkten
Haftung, etc., multiple applicants with separate legal personality or temporary unions of
companies cannot be owners of an EU collective mark. As set out in the Guidelines,
Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2.1, ‘collective
does not mean that the mark belongs to several persons (co-applicants/co-owners) nor
that it designates/covers more than one country’.
As regards the second type of owners, the concept ‘legal persons governed by public
law’ must be interpreted broadly. This concept includes, on the one hand, associations,
corporations and other entities governed by public law. This is, for example, the case of
‘Consejos Reguladores’ or ‘Colegios Profesionales’ under Spanish Law. On the other
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hand, it also includes other legal persons governed by public law, for example, the
European Union, States or municipalities, which do not necessarily have a corporative
or an associative structure but which can nevertheless be owners of EU collective
marks. In these cases, the requirement concerning the conditions for membership
under Article 67(2) EUTMR is not applicable (see decision of 22/11/2011,
R 828/2011-1, para. 18 and decision of 10/05/2012, R 1007/2011-2, paras 17-18). That
is to say, when the applicant for an EU collective mark is a legal person governed by
public law that does not necessarily have a corporative or an associative structure,
such as the European Union, a State or a municipality, the regulations governing use of
the mark need not contain details concerning membership.
2.14.3 Particularities as regards absolute grounds for refusal
The absolute grounds for refusal listed in Article 7(1) EUTMR apply to EU collective
marks. This means that these marks will first be examined under those provisions to
verify, for example, whether or not they are distinctive, deceptive or have become a
customary sign. If, for instance, a mark is not inherently distinctive under Article 7(1)(b)
EUTMR, it will be refused (see decision of 18/07/2008, R 229/2006-4, para. 7).
However, there are some exceptions and particularities that must also be taken into
account when examining the absolute grounds for refusal for EU collective marks. In
addition to the grounds for refusal of an EUTM application contained in Article 7(1)
EUTMR, examiners also assess the following specific grounds:



descriptive signs
misleading character as to its nature
regulations of use contrary to public policy and morality.
These specific grounds for refusals can also be the subject of observations filed by
third parties.
2.14.3.1 Descriptive signs
Signs or indications which may serve, in trade, to designate the geographical origin of
the goods or services may constitute Community collective marks (see judgment of
15/10/2003, T-295/01, para. 32 and judgment of 25/10/2005, T-379/03, para. 35).
As a result, a sign that exclusively describes the geographical origin of the goods or
services (and that must be refused if it is applied for as an individual CTM) can be
accepted if (i) it is validly applied for as an EU collective mark and (ii) it complies with
the authorisation foreseen in Article 67(2) CTMR (see decision of 05/10/2006,
R 280/2006-1, paras 16, 17).
According to this provision, the regulations governing use of an EU collective mark that
is descriptive must authorise any person whose goods or services originate in the
geographical area concerned to become a member of the association that is the
proprietor of the mark.
For example, an application for the word mark ‘Alicante’, specifying tourist services
should be refused under Article 7(1)(c) EUTMR if it is applied for as an individual CTM,
given that it describes the geographical origin of the services. However, as an
exception, if it is validly applied for as an EU collective mark (i.e. it is applied for by an
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association or a legal person governed by public law and it complies with the other
requirements of European Union collective marks) and the regulations governing use of
the mark contain the authorisation foreseen in Article 67(2) EUTMR, it will be accepted
under Article 7(1)(c) EUTMR.
This exception exclusively applies to those signs that are descriptive of the
geographical origin of the goods and services. If the EU collective mark is descriptive of
other characteristics of the goods or services, this exception does not apply and the
application will be refused under Article 7(1)(c) EUTMR.
For example, if the word mark ‘Do-it-yourself’ is applied for as an EU collective mark for
tools in Class 7, it will be considered descriptive of the intended purpose of the goods.
Since the sign is descriptive of certain characteristics of the goods other than their
geographical origin, it will be refused under Article 7(1)(c) EUTMR despite having been
applied for as an EU collective mark (see decision of 08/07/2010, R 0934/2010-1,
para. 35).
2.14.3.2 Misleading character as to its nature
The examiner must refuse the application if the public is liable to be misled as regards
the character or the meaning of the mark, in particular if it is likely to be perceived as
something other than a collective mark.
A collective mark that is available for use only by members of an association that owns
the mark could be liable to mislead if it gives the impression that it is available for use
by anyone who is able to meet certain objective standards.
2.14.3.3 Regulations of use contrary to public policy and morality
If the regulations governing use of the mark are contrary to public policy or to accepted
principles of morality, the EU collective mark application must be refused.
This ground for refusal must be differentiated from that contained in Article 7(1)(f)
EUTMR, which prohibits registration of those trade marks that are by themselves
contrary to public policy or to accepted principles of morality.
The refusal foreseen in Article 68(1) EUTMR refers to situations where, regardless of
the trade mark, the regulations governing use of the mark contain a provision that is
contrary to public policy or to accepted principles of morality, for instance rules that
discriminate on the grounds of sex, creed or race. For example, if the regulations
contain a clause that prohibits women from using the mark, the EU collective mark
application will be refused, even if the trade mark does not fall under Article 7(1)(f)
EUTMR.
The examiner’s objection can be waived if the regulations are amended in order to
remove the conflicting provision. In the above example, the EU collective mark
application will be accepted if the clause that prohibits women from using the mark is
deleted from the regulations.
Guidelines for Examination in the Office, Part B Examination
FINAL
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